Appeal No. 1997-3701 14
Application No. 08/141,457
the above findings of fact and analysis, we conclude that the combination of the
references of record is sufficient to establish a prima facie case of obviousness.
As a rebuttal to the prima facie case of obviousness, appellants assert that,
“[n]arrower ranges are patentable with a showing of unexpected results.” See Brief,
page 6. It is argued that the comparative data presented in Tables 1 through 4 of the
specification and a Declaration by Merkel under 37 CFR § 1.132 which unexpectedly
demonstrate an increase in the stability, overcomes the prima facie case of obviousness.
See Brief, pages 5 and 14. Having reviewed the data present, we conclude that the
showing in Tables 1 to 4 and the Merkel Declaration is not commensurate in scope with
the degree of protection sought by the claimed subject matter. See In re Grasselli, 713
F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Tiffin, 448 F.2d 791,
792, 171 USPQ 294, 294 (CCPA 1971). It is well settled that “[o]bjective evidence
of nonobviousness must be commensurate in scope with the claims.”) (quoting In re
Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); In re Dill, 604 F.2d
1356, 1361, 202 USPQ 805, 808 (CCPA 1979) (“The evidence presented to rebut a
prima facie case of obviousness must be commensurate in scope with the claims to which
it pertains”).
The claimed subject matter is directed to the addition of sulfides (VI), sulfoxides
(VII), or sulfones (VIII). Each group of compounds is broadly recited and reads on
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007