Appeal No. 1998-0847
Application No. 08/483,762
Reply Brief, pages 2-5). Accordingly, we must reevaluate the
evidence of prima facie obviousness in light of the evidence
of non-obviousness. See In re Oetiker, 977 F.2d at 1445, 24
USPQ2d at 1444.
Appellants rely on the results shown in Tables 1-3 of the
specification as a showing of unexpectedly superior results
(Brief, page 7). We do not agree that this showing is
sufficient to overcome the evidence of prima facie obviousness
for the following reasons. First, appellants admit that the4
difference in results between the Comparative Example and
Examples I and II of the invention are significant only for
temperatures between 35 and 50EC. (Brief, page 7). However,
claim 1 on appeal is not limited to any temperature.
Therefore the results presented are not commensurate in scope
with the subject matter sought to be patented. See In re
4Appellants submit two Declarations under 37 CFR § 1.132 by Limburg in
conjunction with extensive arguments regarding the methodology used in
producing the results summarized in Tables 1-3 of the specification (see the
Brief, pages 7-11; Reply Brief, pages 2-5). The examiner presents
countervailing arguments regarding the testing procedure (Answer, pages 11-
12). In view of the deficiencies in the showing noted infra, we need not
discuss the testing procedure except to note that use of one subject to
determine a noise level (i.e., “squeak”) would not be entirely subjective but
would merely be a factor in weighing the preponderance of the evidence in an
obviousness determination.
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