Appeal 1997-1635
Application 08/319,667
1.
Applicants maintain that less deposits are left in the
distillation column when their process is used. We note,
however, that there is no limitation in the claim concerning
the amount of deposits.
2.
Lest applicants become alarmed that we require too much
in a claim, we have no hesitation in saying that an unexpected
result need not necessary appear in the claim.
We simply are hinting that if a deposits limitation had
appeared in the claim, it would have been easier for
applicants to maintain that their specification showing is
commensurate in scope with the breadth of their claims. If a
claim covers only "a low amount of deposits left in the
distillation column", then embodiments in the prior art which
describe (explicitly or inherently) large amounts of deposits
become less significant in an obviousness analysis. In other
words, there are two ways to deal with an examiner's
commensurate in scope criticism. First, the claim may be
limited to require the unexpected result. Second, a showing
can be presented including a sufficient number of examples so
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