Appeal No. 97-1107 Page 9
Application No. 08/047,512
given in Rossiter. The suggestion to combine comes from the nature of the problem to be solved and
the express teachings in the references.
Where, as here, the prior art establishes that the shape is one of various configurations that one
of ordinary skill in the art would have found obvious for the purpose of confining the gas to the optical
beam and reducing the quantity of gas required in the cell, appellant must show that the particular
configuration produces an unexpected result or provide some other evidence of secondary
considerations. Cf. In re Dailey, 357 F.2d 669, 672-73, 149 USPQ 47, 50 (CCPA 1966). The
evidence must be sufficient to rebut the prima facie case when all the evidence is evaluated as a whole.
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Rinehart, 531
F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Appellant draws our attention to the declarations filed June 21, 1996 and August 26, 1996, the
latter of which is said to specifically point out the advantages of the present cell as compared to the
Rossiter type cell. This second declaration proffers data for cell clearing time of the inventive cell as
compared to a Rossiter type cell. Objective evidence of non-obviousness must be commensurate in
scope with the claims. In re Kulling, 897 F.2d 1147 1149, 14 USPQ2d 1056, 1058 (Fed Cir.
1990). We agree with the examiner that the data is not commensurate in scope with the claims on
appeal. The cell used as the inventive cell includes right cylindrical ends. Such ends are not required by
claim 26. Furthermore, the cell includes a directed flow nozzle not required by any of the claims on
appeal.
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