Appeal No. 1996-1529
Application No. 08/233,219
established a prima facie case of obviousness sufficient to shift the burden to appellants to produce
evidence establishing an unobvious difference between the claimed product and the prior art product.
The “objective evidence of nonobviousness must be commensurate in scope with the claims
which the evidence is offered to support.” In re Grasselli, 713 F.2d 731, 739-40, 218 USPQ 769,
777 (Fed. Cir. 1983). Arguments of counsel cannot take the place of evidence. In re De Blauwe,
736 F.2d 669, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315, 203
USPQ 245, 256 (CCPA 1979).
Here, a comparison of the data in appellants’ specification to the data disclosed in Wardle
carries little, if any, probative weight since the polymers were obtained under different experimental
conditions, e.g., with different temperatures and alcohols, and appellants have not discussed what effect
these differences and other result effective variables, e.g., the relative concentration of alcohol, catalyst
and monomer, may have had on the results. As to the comparative data presented in the Wardle
Declaration, we agree with the examiner that the showing is not commensurate in scope with the
claimed invention (answer, page 14). The showing is limited to one specific monomer, i.e., a
substituted oxetane called BAMO, whereas the claim encompasses not only (un)substituted oxetanes
but also (un)substituted tetrahydrofurans. The data is also based on variable molar ratios of
catalyst/alcohol, different amounts of monomer and different temperatures. Appellants have not
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