Appeal No. 2002-0405
Application No. 07/325,269
the Gotor article to overcome the new grounds of rejection based
on Wu, we note the following deficiencies in regard to the Gotor
article.
Gotor compares the properties of superconductors made by a
sol-gel method with superconductors made by an undisclosed
commercial process. There is no evidence that the sol-gel method
utilized by Gotor is the same as that of the present invention.
Rebuttal evidence must represent a comparison between the claimed
invention and the closest prior art. In re Malagari, 499 F.2d
1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Absent knowing the
commercial process used to prepare Gotor’s samples, we cannot
conclude that Gotor’s analysis represents a comparison of sol-gel
derived superconductors with the closest prior art. As
appellants correctly observe, Gotor’s testing is limited to sol-
gel powders prepared from an aqueous nitrated solution complexed
by citric acid. Reply Brief, p. 2. In addition, Gotor only
compares superconductors of the Y-Ba-Cu-O system. The claims are
not limited to superconductors made using citric acid, nor are
they limited to Y-Ba-Cu-O compounds. A showing of unexpected
results must be commensurate in scope with the claims. In re
Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1688 (Fed. Cir. 1995).
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