Ex Parte LEPELTIER et al - Page 9


          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.                                                                   

                                          9                                           



Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  Next 

Last modified: November 3, 2007