Appeal 97-1554
Application 08/495,593
We made the following additional observation in the event
applicants elect to file a continuation following this appeal.
A showing of unexpected results generally should be
commensurate in scope with the breath of the claims. In re
Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978)
(showing of unexpected results must be commensurate in scope
with breadth of claim); In re Kulling, 897 F.2d 1147, 1149, 14
USPQ2d 1056, 1058 (Fed. Cir. 1990) (same).
It is not apparent to us how the showing in the
specification and the showing in the Schwahn declaration can
be commensurate in scope with the breadth of the claims.
For example, the claims call for a hydrocarbon radical
which, inter alia, may be various radicals, including
polybutyl and polyisobutyl having a molecular weight of 500 to
10,000. The showing is limited to a polyisobutyl having a
molecular weight of 1000. While applicants do not say why, a
polyisobutylamine having a molecular weight of 1000 is
particularly preferred. We have no reason to doubt the
objective truth of applicants' statements regarding preferred
and particularly preferred embodiments. But, we do not
understand how a comparison based solely on the particularly
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