Appeal No. 95-4830
Application 07/899,361
difference between this compound and those of Suzuki is an
unexpected difference but, rather, indicates that the
difference is merely an expected difference of degree.
Second, the evidence presented in the declaration is not
commensurate in scope with the claims. See 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).
Appellants’ claim 1 encompasses R having 5-18 carbon atoms
1
and R having 6-16 carbon atoms, and Suzuki discloses an R2 1
having 1-20 carbon atoms and an R having 4-14 carbon atoms
2
(col. 2, lines 19-44). However, in appellants’ Table 2, only
one R , having 8 carbon atoms, and one R , having 6 carbon1 2
atoms, are used. We find in the evidence of record no
reasonable basis for concluding that the great number of
materials encompassed by appellant’s claims would behave as a
class in the same manner as the particular materials tested.
See In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA
1972); In re Susi, 440 F.2d 442, 445-46, 169 USPQ 423, 426
specification as it appeared prior to the June 9, 1993
amendment.
-9-9
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