Ex Parte ICHIKAWA et al - Page 10


         Appeal No. 1999-1180                                                       
         Application No. 08/751,557                                                 


              The appellants allege that a comparison of Examples 13 and            
         14 of the present specification with Moore's examples reveals              
         that the invention recited in appealed claim 1 provides                    
         "markedly improved" selectivities.  (Appeal brief, pages 9-10.)            
         We are not persuaded by this analysis.  As pointed out by the              
         appellants themselves (id. at page 10), the conditions (e.g.,              
         the amounts and flow rates of the catalysts) used in Moore's               
         examples differ significantly from those of the examples                   
         described in the present specification.  Hence, the examples of            
         Moore are not reasonably comparable to the examples of the                 
         present specification for the purpose of determining whether the           
         incorporation of an additional metal as recited in the appealed            
         claims imparts unexpected results.  In re Dunn, 349 F.2d 433,              
         439, 146 USPQ 479, 483 (CCPA 1965)("While we do not intend to              
         slight the alleged improvements, we do not feel it an                      
         unreasonable burden on appellants to require comparative                   
         examples relied on for non-obviousness to be truly comparative.            
         The cause and effect sought to be proven is lost here in the               
         welter of unfixed variables.").                                            
              The appellants also argue that Examples 13 through 15 of              
         the present specification provide evidence of "improved                    




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