Appeal No. 1999-0058
Application No. 08/701,878
ammonia solution of nickel acetate are closer to the appellants'
claimed invention than the organic solution of platinum
bisacetylacetonate in toluene. The appellants, therefore, have
not compared the claimed invention against the closest prior art.
In re Baxter Travenol Labs, 952 F.2d 388, 392, 21 USPQ 1281, 1285
(Fed. Cir. 1991) ("[R]esults must be shown to be unexpected
compared with the closest prior art.").
Also, the showing is not commensurate in scope with the
degree of patent protection desired. Concerning this point,
appealed claims 1, 21, and 22 read on a process that uses a
multitude of M metals and mixtures of M metals, any support, and
any alkali or alkaline earth metal, in any relative atomic or
molar ratio under almost any condition. The showing is even
further removed from being commensurate in scope with appealed
claim 1, which encompasses the use of any Group VIII metal. By
contrast, inventive catalysts B and C of Example 1 are made by
using specific catalyst components in specific atomic or molar
ratios under specific preparation conditions. Under these
circumstances, it cannot be said that the limited showing of the
examples of the specification sufficiently supports the broad
scope of the appealed claims. In re Kulling, 897 F.2d 1147,
1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)("'[O]bjective
evidence of nonobviousness must be commensurate in scope with the
claims.'"; (quoting In re Lindner, 457 F.2d 506, 508, 173 USPQ
by impregnating a solution of hexachloroplatinic acid and stannic
chloride.
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