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. 9Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 NextLast modified: November 3, 2007