Appeal No. 1999-0341
Application No. 08/543,351
[O]ne skilled in this art would find ample motivation from the prior art
supra to use the claimed compound, known for its insecticide
properties, to protect materials, such as paper, leather, polymers or
textiles from the target insects of the instant application with a
reasonable expectation that said compound would be effective to
protect said materials from insects.
We agree with the examiner, that it would have been prima facie obvious to
apply the known insecticide taught by Shiokawa to a stored product that may be
paper, leather, polymers or textiles, with the reasonable expectation that these
stored products would be protected from insects.
Appellants argue (Brief, bridging paragraph, pages 17-18) that “the data
presented in the specification as well as the data presented in the Declaration of Dr.
Tsuboi demonstrate 1-(6-chloro-3-pyridylmethyl)-2-nitroimino-imidazolidine) has
unexpected properties in preserving technical materials such as paper, textiles,
etc.” In order to establish unexpected results for a claimed invention, objective
evidence of non-obviousness must be commensurate in scope with the claims that
the evidence is offered to support. In re Greenfield, 571 F.2d 1185, 1189, 197
USPQ 227, 230 (CCPA 1978); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356,
358 (1972); In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294 (1971).
Applying this rule to appellants' claim, we note that claim 16 is drawn to the
protection of paper, leather, polymers or textiles. In contrast, the Tsuboi Declaration
is limited to the protection of wood. In addition, the data presented in the
specification, pages 21-29 is similarly limited to the protection of wood. In fact the
Application No. 08/543,351.
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