Appeal No. 1996-2626
Application No. 08/286,046
18. A reasonable reading of claim 18 in light of the specification would indicate that the
polyoxyethylene polyoxypropylene alkylamine of Burton is encompassed by the generic
language of the claim. This is supported by page 5 of the specification, which indicates
that the anti-static agent of Burton is a preferred anti-static agent useful in the claimed
product. Also, we find no description in the specification of anti-static agents useful in the
invention which could reasonably be read to exclude the anti-static agents described at
page 5 of the specification from that called for by the claim.
Appellant, alternatively, argues that any prima facie case of obviousness is refuted
by the examples of the specification (Brief, page 9). We have considered the evidence at
pages 9-18 of the specification, to determine whether it demonstrates unexpected results
for the product or products claimed. We note, initially, that the data is limited to the use of
specific anti-static agents, in specific amounts, in combination with a single type of
polymeric material. Therefore, the evidence, at the outset, is not commensurate in scope
with the claimed subject matter as it related to components and relative amounts of each.
It is well settled that a showing of unexpected results must be commensurate in scope with
the scope of the claims. See In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058
(Fed. Cir. 1990); In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA
1980).
Further, Examples 1 and 2 of the specification seek to compare polymeric products
which have anti-static agents present therein with polymeric products which lack an anti-
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