Appeal No. 2000-0459
Application 08/838,584
type disclosed by Caselli, which other stabilizers are within the
scope of component b of appellants’ composition.
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). Thus, it is
incumbent upon appellants to supply the factual basis to rebut
the prima facie case of obviousness established by the examiner.
See, e.g., In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972). Appellants, however, do not provide an adequate
factual showing in their specification, as referred to in the
briefs, to support a conclusion of unexpected advantages for the
claimed invention.
As suggested by the examiner (answer, page 7), appellants
have not furnished test results that are reasonably commensurate
in scope with the subject matter embraced by representative claim
29. For example, that representative claim 29 is not limited to
the combinations of the particular diphosphonite mixture(s),
phosphites and acid scavengers, as well as the relative amounts
thereof as employed in the specification examples. Thus, it is
apparent that the appellants’ evidence is considerably more
narrow in scope than the appealed claims. In addition, appellants
have not satisfied their burden by explaining how the limited
examples furnished in the specification can be extrapolated so as
to reasonably establish unexpected results for compositions co-
extensive in scope with the claimed invention. In other words,
appellants have not shown that the examples furnished in the
specification are truly representative of the claimed subject
matter given the reach thereof. It is well established that the
evidence relied on to establish unobviousness must be
commensurate in scope with the claimed subject matter. See In re
16
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007