Appeal No. 1998-2636
Application No. 08/534,961
which fall within this definition, namely, declaration
compounds 5 and 6.2
For the above stated reasons, it is clear that the
declaration evidence proferred by the appellant is
considerably more narrow in scope than the argued claim on
appeal. We remind the appellant that evidence presented to
rebut a prima facie case of obviousness must be commensurate
in scope with the claims to which it pertains and that such
evidence which is considerably more narrow in scope than the
claimed subject matter is not sufficient to rebut the prima
facie case. In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805,
808 (CCPA 1979). Under these circumstances, it our
determination that the evidence before us on this appeal, on
balance, weighs most heavily in favor of an obviousness
conclusion. We shall sustain, therefore, the examiner’s
2With further regard to this point, we note that the
inventive and comparison results exhibited by declaration
compound 6 (e.g., see Table 3) do not appear to be
significantly or statistically different. Viewed from this
perspective, it is questionable whether the compound 6 results
(even when considered in a light most generous to the
appellant) could be properly characterized as unexpected. The
appellant and the examiner should address this issue in any
further prosecution that may occur.
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