Appeal No. 1998-0548
Application No. 08/498,845
scope fails to adequately represent either the broad scope of appealed claim 1 or the
broad scope of Mitsui's disclosure. See, for example In re Lindner, 457 F.2d 506, 508,
173 USPQ 356, 358 (CCPA 1972) and In re Susi, 440 F.2d 442, 445, 169 USPQ 423,
426 (CCPA 1971). In this regard, the appellants contend that their showing ought not be
regarded as deficient because a "process need not produce superior results in every
environment in which it is used" (reply brief, second page). However, the examiner's
concern regarding this showing (which we share) is unrelated to "superior results in every
environment" but instead relates to the scope of this showing relative to the appealed
claims and the applied prior art.
Under the foregoing circumstances, it is appropriate to regard the appellants'
showing as inadequate to establish that the process of appealed claim 1 produces results
which are unexpected relative to the process of Mitsui. Moreover, this determination is
reinforced by the fact that the portion of appellants' specification (see pages 4 through 6)
which discusses this showing does not characterize it as displaying results which are
unexpected. Concerning this matter, we remind the appellants that evidence presented to
rebut a prima facie case of obviousness must show results which are unexpected and
which are commensurate in scope with the claims to which it pertains. In re Dill, 604 F.2d
1356, 1361, 202 USPQ 805, 808 (CCPA 1979).
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007