Appeal No. 2000-0132
Application No. 08/934,791
page 21), the declarants fail to compare the claimed invention
with the closest prior art, i.e., the ground cellulose triphenyl
carbamate having a particle size of 56-90 microns (not 7 to 13
microns) described in Hagel. See In re Baxter Travenol Labs.,
952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991).
We also observe that the appellants rely on a comparative
showing between separating agent 1c supposedly corresponding to
the ground cellulose triphenyl carbamate described in Hagel and
separating agent 3c corresponding to the supported cellulose
triphenyl carbamate recited in, e.g., claim 21 and 46. However,
for the reasons set forth by the examiner at page 20 of the
Answer, we determine that the alleged improvement would have been
reasonably expected by one of ordinary skill in the art from the
teachings of Schaeffer. See, e.g., In re Skoner, 517 F.2d 947,
950, 186 USPQ 80, 82 (CCPA 1975)(“[e]xpected beneficial results
are evidence of obviousness of a claimed invention just as
unexpected beneficial results are evidence of unobviousness”).
Even if we were to determine that the alleged improvements
are unexpected, our conclusion would not be altered. We
determine that the showing is not reasonably commensurate in
scope with the protection sought by the appealed claims. See In
re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980).
19
Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Next
Last modified: November 3, 2007