Appeal No. 1998-2800 Page 10
Application No. 08/572,505
a rejection. The examiner should make of record any findings
regarding that secondary evidence. In this regard, we remind
the examiner that appellants need not compare the claimed
subject matter with the proposed modified prior art but rather
the closest prior art. However, the evidence furnished by
appellants must establish unexpected results that are
reasonably commensurate in scope with the claimed process, not
merely better results (answer, page 7) that could have been
expected.
Accordingly, we remand this application to the examiner
for further consideration of the patentability of claims 1 and
2 in light of the above discussion and for clarification of
the record with regard to such consideration prior to the
final disposition of this application.
CONCLUSION
The examiner’s rejection of claims 1 and 2 under 35
U.S.C. § 103 as being unpatentable over Uesugi in view of the
admitted prior art and Fujikawa is reversed.
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