Appeal No. 1999-0097
Application No. 08/532,976
Appellants cite Comparative Examples 3 and 4 of the
present specification, which contain amounts of long chain
diol greater than the claimed upper limit. According to
appellants, the specimens "are significantly inferior in terms
of still durability and storage adhesion than those having a
lower content of polyol in accordance with the present claimed
invention" (page 7 of principal brief). However, we agree
with the examiner that the specification data is not
commensurate in scope with the degree of protection sought by
the appealed claims. In re Grasselli, 713 F.2d 731, 743, 218
USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029,
1035, 206 USPQ 289, 296 (CCPA 1980). The examiner correctly
notes that appealed claim 1 embraces the use of all short
chain diols having the recited molecular weight, whereas the
specification data is limited to a specific short chain diol,
i.e., one containing a cyclohexane ring. In addition, the
appealed claims are not limited to the specific long chain
diol used in the specification examples. While appellants
maintain at page 2 of the Reply Brief that "the Examiner has
not set forth any reason why similar results would not be
obtained with a short chain diol other than diols containing a
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