Appeal No. 2001-2491 Page 7
Application No. 09/168,564
Group VIII metals. Nickel and cobalt are Group VIII metals. Wittenbrink specifically
exemplifies mixtures of nickel and/or cobalt with molybdenum (Wittenbrink at col. 3, ll. 49-54).
The references together fairly would have suggested to one of ordinary skill in the art the use of
these Group VIII and Group VI metals together.
To the extent that Appellants are arguing that the comparative data in the specification
show unexpected results and thus rebut the Examiner’s prima facie case of obviousness, we agree
with the Examiner’s determination that the results are not commensurate in scope with the claims
(Answer at 5-6). See In re Kulling, 897 F.2d 1147 1149, 14 USPQ2d 1056, 1058 (Fed Cir.
1990). Appellants test only nickel in combination with molybdenum under a particular set of
conditions. However, claim 1 encompasses using mixtures of any of the known Group VIB
metals, i.e. chromium, molybdenum or tungsten, with any of the known Group VIII metals, i.e.
iron, cobalt, nickel, ruthenium, rhobium, palladium, osmium, iridium, platinum, hassium and
meitherium. Appellants’ argument that a showing of unexpected results for any composition
within the terms of the present claim compared to the prior art is sufficient to establish
patentability herein (Brief at 9; Reply Brief at 2-3) ignores the policy requirement that the
protection accorded should be limited to the specific embodiments of the invention shown to
produce the results in question. In re Hotchkin, 223 F.2d 490, 493, 106 USPQ 267, 270 (CCPA
1955). Appellants have not demonstrated that all the catalyst compositions and reaction
conditions covered by the claims are unobvious over the applied prior art.
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