Appeal No. 2001-2337
Application No. 07/493,442
providing an analysis of the scope of the evidence and the scope of the claims under
review does not allow for a reasoned review of the examiner’s position. To the extent
the examiner’s dismissal of the evidence is on the basis that the claims on appeal do
not state that the gelatin of the element is not hardened or do not recite a determination
time, he has not explained why the claims need to be so limited. If the examiner is of
the opinion that the claims need to recite the underlying basis or mechanism or specific
result demonstrated in order for the evidence to be given weight and effect, he has not
relied upon judicial precedent or any other authority in support of that opinion. In most
cases, issues of whether evidence of unexpected results is commensurate in scope
with the claims arises in the context of the scope of the experimental work performed
which demonstrates the purported unexpected result in relation to the scope of the
pending claims, not whether the claims are limited to recite the purported unexpected
result. In other words, when a claim is commensurate in scope with the proffered
evidence of non-obviousness, the claim will necessarily produce or possess the result
urged to be unexpected.
A second point needs to be considered by the examiner and appellants when the
case is returned to the examiner. As indicated above, the examiner did not properly
account for the claim requirement that the element contain gelatin. In reversing the
rejection we do not mean that the references do not describe a test element containing
gelatin, only that the examiner has failed to explain where the applied prior art teaches
or suggests this requirement. We note that Arter used a Kodak Ektachem Clinical
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