Appeal No. 2000-0459
Application 08/838,584
Therefore, we determine that appellants’ data successfully
rebuts the prima facie case of obviousness.
Therefore, we reverse this rejection.
b. Response to Dissent
We have carefully reviewed our dissenting colleague’s
comments on the rebuttal evidence, and provide the following
comments.
As pointed out by our colleague, the question as to whether
unexpected advantages have been demonstrated is a factual
question. In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260,
1263 (Fed. Cir. 1984). The determination is therefore made on a
case-by-case basis. For example, in the case of In re Kollman,
appellants argued that the showing of unexpected results for
certain proportions of diphenyl ether and FENAC fully supported
patentability of the claimed range of proportions. The court
determined that the showing was adequate and stated that
unobviousness of a broader claimed range can, in certain
instances, be proven by a narrower range of data. In re Kollman,
595 F.2d 48, 56, 201 USPQ 193, 199 (CCPA 1979). See also, Ex
parte Winters, 11 USPQ 1387, 1388 (Bd. Pat. App. & Int. 1989)
(patentability is established by a showing of unexpected
superiority for representative compounds within the scope of the
appealed claims). Compare In re Saunders, 444 F.2d 599, 604 n.6,
170 USPQ 213, 218 n.6 (CCPA 1971).
It is axiomatic that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence
is offered to support. It is enough, however, that the showing
is representative of the claimed subject matter.
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