Ex parte SPANA et al. - Page 4




               Appeal No. 1996-2210                                                                                             
               Application 08/129,722                                                                                           



               9 through 11; page 18, lines 23-26; and Figures 3A and 3B, to rebut the prima facie case                         
               of obviousness.  That reliance is misplaced.  It is well settled that objective evidence of                      
               non-obviousness must be commensurate in scope with the claims which the evidence is                              
               offered to support.  In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir.                            
               1983); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978); In re                               
               Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980).  That is not the case                               
               here.  For the reasons ably set forth by the examiner (Examiner=s Answer, Paper No. 21,                          

               paragraph bridging pages 7 and 8), we find that applicants= evidence of non-obviousness                          

               in the specification is not adequately representative or commensurate in scope with claim                        
               1 on appeal.  Accordingly, we find that applicants= specification evidence is insufficient to                    

               rebut the prima facie case of obviousness.                                                                       
                      On these facts, we hold that claim 1, considered as a whole, would have been                              
               obvious within the meaning of 35 U.S.C. ' 103 in view of Ausubel.  As previously                                 

               indicated, claims 2 through 4, 6 through 17, and 22 fall together with claim 1.  The                             
               examiner=s decision, rejecting claims 1 through 4, 6 through 17, and 22 under             35                     

               U.S.C. ' 103, is affirmed.                                                                                       

                      The examiner=s position to the contrary, notwithstanding, we conclude that the                            

               subject matter sought to be patented in claims 23 through 26 would not have been prima                           

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