Appeal No. 1997-1793
Application No. 08/528,044
show that the appellants’ claimed product has novel and
nonobvious
properties. However, the examiner should reevaluate this3
evidence to determine whether the evidence is sufficient to
show that Hattori’s products fail to necessarily or inherently
possess the characteristics of their claimed product.
Furthermore, the examiner should analyze whether the showing
is commensurate in scope with the claims. In passing, we note
that the descriptions of the comparative (prior art) mixed
oxide as well as the inventive mixed oxide are vague (October
18, 1995 declaration, page 2). Thus, it is not possible to
ascertain whether the runs are truly comparative (i.e.,
whether the experiments constitute back-to-back runs holding
all variables constant except for the novel features of the
claimed invention) and whether the showing is in fact
commensurate in scope with the claims. For example, it is
unclear whether the comparative product contains the same
amount of iron oxide and possesses the same specific surface
area as the inventive product identified as “pyrogenically
3The first declaration filed on July 13, 1995 (Paper No.
9) was unexecuted and should therefore be given no weight. We
note, however, that the second declaration filed October 18,
1995 (Paper No. 18), which is virtually identical to the first
declaration, was executed.
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