Appeal No. 2000-2149 12
Application No. 08/859,901
scope with the degree of protection sought by 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,” see 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.”) There is no comparative data present in the specification. Moreover, as to the
data presented, the examples are largely directed to a solvent mixture of 1,3-propanediol
and polyethylene glycol or a mixture of Liponic EG-1 which is the 26 mole ethylene oxide
adduct of glycerine. In comparison, the claimed subject matter is also directed to mixed
poly(ethylene)(propylene) glycol and a diverse group of oxyalkylated component (ii) of
which only a single species of each has been exemplified by the appellant. In addition,
except for Example 2, the ratio of the solvents in each example is 1:1. In Example 2 the
ratio is 2.33 :1. In contrast, the claimed subject matter requires a ratio of 95:5 to 5:95.
Based upon the above findings, we conclude that to the extent that there is a showing, it is
not commensurate with the claimed subject matter.
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