Appeal Number: 2006-2391
Application Number: 10/311,513
We also agree with the Examiner that the data relied upon by Appellants
merely shows that compositions comprising resins having a surface area of 0.040
m2/g however, the examples employed different process parameters for forming
the compositions and contain several variables that are different than the
composition of Ishizaki (Answer 6). In re Baxter Travenol Labs., 952 F.2d 388,
392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991)(The Adifference in results@ must be
established as being between the claimed subject matter and the closest prior art.).
We further agree with the Examiner that the data relied upon by Appellants
is not commensurate in scope with the claimed invention (Answer 6). See In re
Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978)
(AEstablishing that one (or a small number of) species gives unexpected results is
inadequate proof, for 'it is the view of this court that objective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support.'.” (quoting In re Tiffin, 448 F.2d 791, 792, 171
USPQ 294, 294 (CCPA 1971)). Appellants test only a few compositions, as
exhibited in the figures. However, the claims on appeal are much broader.
Claims 4 and 5 stand rejected under 35 U.S.C. §103(a) as obvious over
Ishizaki and Beal. In response to this ground of rejection, the Appellants have not
challenged the Examiner's interpretation of the Beal reference (Br 7). Appellants
have also not presented arguments regarding the Examiner’s motivation for
combining the teachings of Ishizaki and Beal. Consequently, it appears as if
Appellants are relying on the arguments presented in the discussion of the rejection
of claims 1 and 3 above. In support of the stated rejections, the Examiner has
presented factual determinations regarding the suitability of combining the
teachings of Ishizaki and Beal. (See Answer 4-5). Thus, for the reasons set forth
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