Ex Parte ICHIKAWA et al - Page 11


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


         conversion rate."  (Appeal brief, pages 10-11.)  Specifically,             
         it is said that Examples 13 and 14, which describes a catalyst             
         containing Pd and V, should be compared against Example 15,                
         which describes a catalyst containing only Pd.  We observe,                
         however, that the results disclosed for Examples 13 and 14 are             
         comparable, if not inferior, to the results disclosed for                  
         Moore's catalyst.  (Moore's Example 12.)  Moreover, Examples 13            
         and 14 of the present specification are limited to a Pd/V                  
         catalyst used under specific reaction conditions.  By contrast,            
         appealed claims 1 and 6 are significantly broader.  Thus, we               
         determine that the appellants' showing of unexpected results is            
         far from being commensurate in scope with the degree of patent             
         protection sought.  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 Lindner, 457 F.2d at 508, 173 USPQ at 358); 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.").             
              The appellants urge that Moore's Examples 23 and 24 should            
         be compared against Examples 1 and 4 of the present                        




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