Appeal No. 2001-2337
Application No. 07/493,442
legal standard.
First, a conclusion of prima facie obviousness does not end a patentability
determination under 35 U.S.C. § 103. As stated in In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by experiment, prior
art references, or argument, the entire merits of the matter are to be reweighed.
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Here, appellants have presented comparative examples in an attempt to
establish unexpected results for the claimed invention. Specifically, appellants have
provided evidence and argument that “the ferricyanide oxidizing agent, as used in this
invention, would have been expected to fail as a suitably rapid oxidizing agent within the
neutral pH used here” and that, instead, “ the ferricyanide used in this element permits
the very rapid generation of a detectable colored signal – in only 57 seconds” (appeal
brief, page 10; specification, page 4, line 29).
It is true that objective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support. In re Clemens, 622
F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980); In re Greenfield, 571 F.2d 1185,
1189, 197 USPQ 227, 230 (CCPA 1978); In re Lindner, 457 F.2d 506, 508, 173 USPQ
356, 358 (CCPA 1972); In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA
1971). In applying this legal principle to the facts at hand it is apparent that merely
stating that the evidence is not commensurate in scope with the claims without
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