Appeal No. 1999-0058
Application No. 08/701,878
356, 358 (CCPA 1972)); In re Dill, 604 F.2d 1356, 1361, 202 USPQ
805, 808 (CCPA 1979) ("The evidence presented to rebut a prima
facie case of obviousness must be commensurate in scope with the
claims to which it pertains.").
Moreover, the appellants do not point to any objective
evidence to establish that the differences in terms of
selectivity between catalysts A, B, and C would have been
considered unexpected by one of ordinary skill in the art. It is
not enough to show that there is a difference in results for the
claimed invention and the closest prior art; the difference in
results must be shown to be unexpected. In re D'Ancicco, 439
F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA 1971) (holding that the
appellants failed to rebut a prima facie case of obviousness
where the asserted differences between the claimed foams and
prior art foams were not shown to be significant); In re Freeman,
474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973) (explaining
that in order for a showing of unexpected results to be probative
evidence of nonobviousness, an applicant must establish (1) that
there actually is a difference between the results obtained
through the claimed invention and those of the prior art and (2)
that the difference actually obtained would not have been
expected by one skilled in the art at the time of invention).
Because the appellants have not rebutted the examiner's
prima facie case of obviousness with persuasive argument or
evidence, we uphold the examiner's 35 U.S.C. § 103 rejection of
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