Appeal No. 95-4300
Application No. 08/165,565
does not have to be identical to that of the applicants to establish obviousness. In re Kemps,
97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
In addition to arguments, appellants urge (Brief, pages 6-7) that the data in the
specification, particularly Tables 1 and 2 at pages 15-16, demonstrate surprising differences
in properties between compositions containing all 5 of the components when compared with
compositions which contain only 4 of the 5. We find it sufficient to note that the showing is not
commensurate in scope with the claimed subject matter. As the examiner has noted
(Answer, page 7):
The claims do not require the presence of component d, do not require titanium
dioxide/carbon black, do not require high amounts of STB and claim a wide
variety of flame retardants.
The showing of the specification is not commensurate in scope with the claims and is
therefore insufficient to overcome the prima facie case of obviousness. In re Grasselli, 713
F.2d 731, 743, 218 USPQ 769, 778-779 (Fed. Cir. 1983) ; In re Clemens, 622 F.2d 1029,
1035, 206 USPQ 289, 296 (CCPA 1980).
We conclude that, with regard to claims 1-13 and 16-17, the examiner has
established that it would have been obvious to one of ordinary skill in the art, at the time of the
invention, to modify the composition of Curry in such a manner as to arrive at the claimed
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