Appeal No. 1999-0381
Application No. 07/776,014
claimed invention yields unexpected or improved results compared to the prior art bears
the burden of establishing that the argued results in the declaration are indeed unexpected
or improved. In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). In
submitting evidence asserted to establish unexpected or improved results, it has long been
held that objective evidence of nonobviousness must be commensurate in scope with the
claims which the evidence is offered to support.
See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980);
In re Greenfield 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978); In re Tiffin, 443
F.2d 394, 170 USPQ 88 (CCPA 1971). It has also been held that
… appellant is not required to test each and every species
within the scope of the appealed claims and compare same
with the closest prior art species. Rather, patentability is
established by a showing of unexpected superiority for
representative compounds within the scope of the appealed
claims. What is representative is a factual question which is
decided on a case-by-case basis.
Ex parte Winters,11 USPQ2d 1387, 1388 (BdPatApp&Int 1989).
Appellant submitted a declaration by the inventor, Edward C.Y. Nieh, to rebut the
obviousness rejection under appeal asserting that the claimed compositions possessed
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