Appeal No. 95-3981
Application 08/099,880
It is not apparent and appellants [sic] have [sic] not explained why one
having ordinary skill in the art would have reasonably extrapolate [sic] the
results obtained for two PVA polymers to the various of [sic] polymers
belonging to the range 5,000-200,000. Accordingly it would not appear
that the probative value of the evidence is commensurate in scope with
the degree of protection sought.
Thus, the only objection raised by the examiner to the evidence relied upon by
appellant is based upon the examiner’s determination that the results obtained using
two polyvinyl alcohol polymers having an average molecular weight of 7,000 and
186,000 cannot be extrapolated throughout the range of molecular weights required for
this element of the claimed composition.
We are unaware of any hard and fast rules to be followed in determining
whether evidence of nonobviousness offered in rebuttal of a prima facie case of
obviousness is commensurate in scope with the claims under review. Rather, like so
many other determinations in the field of patent law, this determination must be based
upon the facts of the case. Here, the examiner has attempted to shift the burden to
appellant to explain why the results should be extrapolated. However, in doing so, the
examiner has lost sight of the strength of the evidence relied upon in support of the
conclusion of prima facie obviousness. Gueret and the NoxzemaŽ carton do describe
the use of polyvinyl alcohol in a composition useful in forming a cosmetic mask.
However, neither reference specifies the molecular weight of the polyvinyl alcohol.
This can be seen as a weakness in the evidence supporting the conclusion of prima
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