Appeal 2007-1680
Application 10/081,087
judged. That is, the Appellants have not established that the claimed product
is unexpectedly superior to the products taught by Hayashi or Kato.
Third, Appellants’ offered data is not commensurate in scope with 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 1185, 1189, 197 USPQ 227, 230 (CCPA 1978); See also In re
Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990).
While the examples are directed to particles having specific mean circularity
and circularity distribution, the claims are not so limited. The Appellants fail
to demonstrate that these examples are predictive of all the claimed particles,
especially those having varied surface areas, different mean circularity ranges,
and different diffraction ratios, including those ingredients not excluded by
the claims on appeal. (e.g., Br. 10, Table).
Thus, based on the totality of record, including due consideration of the
Appellants’ evidence and arguments, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness within the meaning of
35 U.S.C. § 103.
VI. ORDER
The decision of the Examiner is affirmed.
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