Appeal No. 1998-1728
Application 08/397,243
obtained with the specification Examples and Comparative Examples, would be obscured.
Accordingly, the evidence relied on by appellants is entitled to little, if any, weight. Cf. In re Heyna,
360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966); In re Dunn, 349 F.2d 433, 439, 146
USPQ 479, 483 (CCPA 1965) (“[W]e do not feel it an unreasonable burden on appellants 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 welter of unfixed variables.”).
Furthermore, even if the evidence may be found to establish that there is a patentable difference
between a claimed target encompassed by appealed claims 1 and 2 and a target taught by Satou, the
record does not establish that such evidence is commensurate in scope with the breadth of the targets
encompassed by claims 1 and 2 vis-à-vis the teachings of Satou. Indeed, the comparison provided by
specification Examples 1-10 and Comparative Examples 1-6 are not directed to the process
parameters taught by Satou to provide the minute, fine mixed structures taught in the reference, such as
that exemplified by Satou Example 1 and there is no explanation or evidence of record establishing that
the results of the comparison provided can be extrapolated to a comparison of claimed targets and such
targets of Satou. See In re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289, 295-96 (CCPA
1980)(“This is not a case in which the probative value of a narrow range of data can be reasonably
extended to prove the unobviousness of a broader claimed range. . . . Here, the claimed range includes
temperatures below 60°C, temperatures at which CME-based resins would be expected to perform
well. Appellants’ tests, however, only compare VBC- and CME-based resins at temperatures at which
the latter would be expected to perform poorly. There is therefore no basis in this data for predicting the
relative performance of VBC- and CME-based resins at temperatures at which the latter would be
expected to perform.”).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Satou with appellants’ countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention encompassed by appealed
claims 1 through 5 and 11 through 13 would have been obvious as a matter of law under 35 U.S.C. §
103.
The examiner’s decision is affirmed.
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