Appeal No. 1998-1672
Application No. 08/708,163
Assuming, arguendo, that appellants have presented
comparative examples that are representative of the closest
prior art, in order to establish unexpected results for a
claimed invention, objective evidence of non-obviousness
must also be commensurate in scope with the claims which
the evidence is offered to support. In re clemens, 622
F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980); 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
(CCPA 1972); In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294,
294 (CCPA 1971). Here, the scope of the evidence has not
been shown to be commensurate with the scope of appellant’s
claims. For example appellant’s solution in Table I on
page 17 does not fully reflect the ranges of each component
in appellant’s claim 25. Appellant could have provided
representative examples at each end of each range and
examples within each range.
Furthermore, the test conducted must be sufficient to
permit a conclusion respecting the relative effectiveness
of appellant’s claimed invention and the invention of the
closest prior art. In re of Payne, 606 F.2d 303, 316, 203
USPQ 245, 256 (CCPA 1979); In re Holladay, 584 F.2d 384,
386, 199 USPQ 516, 518 (CCPA 1978); In re Merchant, 575
F.2d at 869, 197 USPQ at 787-88 (CCPA 1978). It is not an
unreasonable burden on appellant to require comparative
examples relied on for non-obviousness to be truly
comparative. The cause and effect sought to be proven is
lost here in the jumble of unfixed variables. In re Dunn,
349 F.2d 433, 439, 46 USPQ 479, 483 (CCPA 1965).
In view of the above reconsideration of the totality
of the record before us, we have weighed the evidence of
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