Appeal 2007-1529
Application 10/385,722
Appellants, however, do not refer to an adequate factual showing in
the Specification to support a conclusion of unexpected advantages for the
claimed subject matter. In this regard, we note that the AZ 61 alloy results
reported in Table 5 of the Specification bear no clear relationship to the
broadly recited forging specified in representative claim 1. Appellants
simply have not satisfied the well-established criterion that the evidence
relied on to establish unobviousness must be commensurate in scope with
the claimed subject matter. See In re Dill, 604 F.2d 1356, 1361, 202 USPQ
805, 808 (CCPA 1979). Moreover, the applied references state a preference
for small grain sizes, and Appellants have not established that any improved
results from using grain sizes within the claimed range would have been
truly unexpected to an ordinarily skilled artisan familiar with the expected
plasticity properties of magnesium alloys having such grain sizes.
Hence, we are not satisfied that the evidence of record that is offered
for comparison, as discussed in the Briefs, demonstrates results that are truly
unexpected over the closest prior art for reasons set forth above and in the
Answer. Nor have Appellants satisfied their burden of explaining how the
results reported for the limited tests presented can be extrapolated to
substantiate Appellants’ contentions for the invention as broadly claimed.
It follows that we shall sustain the Examiner’s obviousness rejection
of claims 1-7, 23, and 25-29.
Claims 5 and 7
Concerning dependent claims 5 and 7, Appellants argue these claims
as another grouping. Thus, we select claim 7 as the representative claim.
Representative claim 7 further requires that a forging temperature and strain
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