Ex Parte Fukuoka et al - Page 11

                Appeal 2007-1118                                                                             
                Application 10/237,089                                                                       

                present examples that represent all of the particle sizes encompassed by the                 
                claimed invention.  “Establishing 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.’”  In re Greenfield,               
                571 F.2d at 1189, 197 USPQ at 230 (quoting In re Tiffin, 448 F.2d 791, 792,                  
                171 USPQ 294, 294 (CCPA 1971)).  Appellants have not explained why the                       
                few examples presented are representative of the entire scope of the claimed                 
                invention.                                                                                   
                      Based on the totality of record, including due consideration of the                    
                Appellants’ arguments and evidence, we determine that the preponderance                      
                of evidence weighs most heavily in favor of obviousness within the meaning                   
                of 35 U.S.C. § 103.  Accordingly, we sustain the rejection of claim 1 and                    
                those claims standing or falling therewith.                                                  
                      Appellants argue claim 4 separately.  According to Appellants, claim                   
                4 is limited to a carbon coating, and the Fukuoka Declarations even more                     
                strongly support the patentability of claim 4 because these Declarations                     
                report data on carbon coatings (Br. 16).  The evidence is insufficient                       
                because, as explained above, Appellants have not shown that the result                       
                would have been unexpected to one of ordinary skill in the art.                              
                      With respect to claims 2, 3, 5-8, 13, 14, and 16-20 Appellants argue                   
                that none of the features of these claims are disclosed by the cited references              
                (Br. 15-16).  There is no sufficiently specific argument to address nor is the               
                Examiner’s specific reasoning disputed (Answer 4-5) and, therefore, we                       



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