Appeal 97-1554
Application 08/495,593
subject matter would have been obvious in view of Kummer and
Rath at the time applicants (not Rath) made the claimed
invention.
2. Applicants' rebuttal showings
a.
The examiner found, in effect, that the showing in the
specification did not involve a comparison of the claimed
invention with the closest prior art. As a general
proposition, when a comparison is made between a claimed
invention and the prior art, the comparison must be between
the claimed invention and the closest prior art. In re Baxter
Travenol Lab., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed.
Cir. 1991) (when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected
compared with the closest prior art); In re Boesch, 617 F.2d
272, 205 USPQ 215 (CCPA 1980) (same); In re DeBlauwe, 736 F.2d
699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) (due to the
absence of tests comparing appellants' heat shrinkable
articles with those of the closest prior art, we conclude that
appellants' assertions of unexpected results constitute mere
argument); In re Merchant, 575 F.2d 865, 869, 197 USPQ 785,
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