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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