Appeal 2007-4098
Application 09/962,887
146 USPQ 479, 483 (CCPA 1965)(“[W]e do not feel it an unreasonable
burden on appellants to require comparative examples relied on for non-
obviousness to be truly comparative. The cause and effect sought to be
proven is lost here in the welter of unfixed variables.”). In other words, we
cannot determine whether Klabunde’s pellets are patentably different from
those claimed or unexpectedly inferior to those claimed.
Even if the Schlegel Declaration shows preparing the pellet taught by
Klabunde, the Appellants still have not demonstrated that the showing in
Specification Example 2 is reasonably commensurate in scope with the
protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731,
743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029,
1035, 206 USPQ 289, 296 (CCPA 1980). While the showing in
Specification Example 2 is limited to pellets produced by granulating the
product formed from specific compounds and FeOOH under specific
conditions, the claims on appeal are not so limited. The Appellants have not
demonstrated that the multifarious pellets encompassed by the claims on
appeal, including those resulting from mechanically shaping (compacting)
wet iron oxide from an aqueous suspension (without the compounds used in
Example 2) have the same properties as that shown in Specification Example
2.
Therefore, based on the Factual Findings set forth in the Answer and
above, we determine that the preponderance of evidence weighs most
heavily in favor of obviousness of the subject matter recited in claims 1
through 4 within the meaning of 35 U.S.C. § 103.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013