Appeal No. 2000-0316 8
Application No. 08/587,821
The appellants rely on the examples in the specification and particularly Table II of
Example 2 as reproduced on page 8 of the Shuchart Declaration, an executed Rule 132
Declaration of record and argue that the Declaration shows that, “the hydroxy group of the
hydroxy carboxylic acid provides additional coordination to aluminum and aluminum
fluoride cations thereby maintaining the cations in solution and reducing the precipitation.”
See Brief, pages 7 and 8. We find however that the examples and Declaration under
37 CFR §1.132, and the accompanying Table II of the specification as not being
commensurate in scope with the claimed subject matter. See In re Grasselli, 713 F.2d
731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Tiffin, 448 F.2d 791, 792,
171 USPQ 294, 294 (CCPA 1971). It is well settled that "objective evidence of
nonobviousness must be commensurate in scope with the claims." In re Lindner, 457 F.2d
506, 508, 173 USPQ 356, 358 (CCPA 1972); 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.")
Table II of the Declaration is based upon Table II of the specification adding only
additional calculated data. We find that each of Examples 1 and 2 are directed to
compositions wherein the aluminum concentration and the fluoride concentration are each
0.58 molar which is a ratio of 1:1. In contrast the subject matter of claim 26 contains no
limitations directed to the concentration of aluminum or hydrofluoric acid present in the
acidizing composition utilized in the claimed method. Based solely on the single
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