Appeal No. 96-3431
Application No. 08/307,535
the Example 6 evidence involves only three specific inventive
compositions, it is considerably more narrow in scope than the
independent claims on appeal, and it is well established that
evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it
pertains. In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808
(CCPA 1979). Finally, it appears to us that the reduction of
engine deposits (i.e., cleanliness) and concomitant piston ring
sticking shown in Example 6 would have been expected and thus
obvious, rather than unexpected and thus nonobvious, in light of
Miller's express teaching that his composition effects such a
reduction (e.g., see lines 19 through 40 in column 1 and
particularly lines 13 through 39 in column 7). In re Skoll, 523
F.2d 1392, 1396-97, 187 USPQ 481, 484 (CCPA 1975).
Under the circumstances recounted above, it is our ultimate
determination that all the evidence of record, on balance, weighs
most heavily in favor of an obviousness conclusion. We shall
sustain, therefore, the examiner's section 103 rejection of
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