Appeal No. 1997-1875
Application No. 08/451,378
narrow in scope than the here claimed subject matter. It is
well established that evidence presented to rebut a prima
facie case of obviousness must be commensurate in scope with
the claims to which it pertains and that evidence which is
considerably more narrow in scope than the claimed subject
matter is not sufficient to rebut a prima facie case. In re
Dill, 604 F.2d 1356, 1360, 202 USPQ 805, 808 (CCPA 1979).
Thus, the appellants' evidence of nonobviousness is deficient
in that it does not show the class of compounds defined by
their independent claim to be unexpectedly superior as a class
to the comparison prior art compounds. In re Susi, 440 F.2d
442, 446, 169 USPQ 423, 426 (CCPA 1971).
The appellants argue "the examiner has not met the burden
of presenting objective evidence or sound scientific reasoning
to support the conclusion that all of the claimed compounds
would not be expected to have a stabilizing effect similar to
the [inventive] compounds exemplified in the two Zinke
Declarations" (Brief, page 7). It is, however, the
appellants' burden to show that their claimed compounds as a
class possess the superiority asserted in the declarations.
In re Susi, id. Regardless, there is in fact evidence and
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