Appeal No. 1998-2190
Application No. 08/593,266
i.e., Tada. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67,
71 (CCPA 1979). We note that Tada discloses an example with indium
sulfate while the comparative tests only compare indium sulfate,
sulfamate, and chloride against no indium compound or indium oxide
(specification, pages 32-35). Furthermore, appellants have not
explained why the comparative results are commensurate in scope
with the claims. See In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980). The claims are quite broad in scope while
the showing is limited to much narrower, specific materials. In
fact, embodiment 1 is limited to a zinc alloy powder similar to
that taught by Tada (see the specification, page 32).
For the foregoing reasons, based on the totality of the
record, giving due consideration to appellants’ evidence and
arguments, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of section
103. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). Accordingly, the examiner’s rejection of the
claims on appeal under 35 U.S.C. § 103 over Tada in view of
Kawakami, Lee and Julian is affirmed. Since we have used reasoning
which differs from the examiner, as well as interpreting the
references and construing the claims in a different manner, we
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