Appeal No. 1999-0663
Application 08/624,047
The appellants argue that the data in appendix III of their
brief, which are taken from table 1 of the specification and from
the Rule 132 declaration by Strebelle filed with the brief as
appendix II, show the unexpected result of no soiling (brief,
pages 8-10). For the following reasons, these data are not
effective for overcoming the prima facie case of obviousness.
First, the appellants’ showing of unexpected results does
not provide a comparison of the claimed invention with the
closest prior art. See In re Baxter Travenol Labs., 952 F.2d
388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); In re De Blauwe,
736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). In
Scott’s example 5, which is the closest prior art, the amounts of
Cu and K and the K/Cu ratio are within the appellants’ ranges.
The appellants, however, do not provide any soiling data for this
example. They merely presume that because Scott is silent as to
soiling, there must have been soiling.
Second, the relied-upon evidence is not commensurate in
scope with the claims. See In re Grasselli, 713 F.2d 731, 743,
218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029,
1035, 206 USPQ 289, 296 (CCPA 1980). A comparison of the ranges
in the tests of the appellants’ composition versus the ranges
recited in the appellants’ claim 11 is as follows:
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007