Appeal No. 1999-2161 Page 9
Application No.08/475,127
506, 508, 173 USPQ 356, 358 (CCPA 1972); In re Tiffin, 448 F.2d
791, 792, 171 USPQ 294, 294 (CCPA 1971).
The Palys Declaration (Paper No. 14) discusses synergistic
effects allegedly achieved by appellants’ invention. Table A,
e.g, on page 6 of this Declaration, is used to illustrate that
Run #4 achieves more than an additive effect on scorch time
protection. However, appellants have not explained that the
specific composition used in Run #4 is fully commensurate in
scope with the composition of claim 110. For example,
appellants have not shown that the specific composition used in
Run #4 has the same weight ratios required by claim 110.
Appellants discuss examples 1, 2, 3, 4, 5, 7, 12, and 13
set forth in their specification. (brief, pages 25-31). We have
carefully reviewed each of these examples, and find these
examples also unconvincing for the same reasons that the data of
the Palys Declaration (paper No. 14) is unconvincing. Hence,
appellants have also not shown that these specific examples are
commensurate in scope with the composition of claim 110.
Moreover, appellants have not shown that the comparisons
made are made with the closest prior art. We remind appellants
that rebuttal evidence can be in the form of direct or indirect
comparative testing between the claimed invention and the
closest prior art. In re Merchant, 575 F.2d 865m 869, 197 USPQ
785, 788 (CCPA 1978); In re Blondel, 499 F.2d 1311, 1317, 182
USPQ 294, 298 (CCPA 1974); In re Swentzel, 42 CCPA 757, 763, 219
F.2d 216, 220, 104 USPQ 343, 346 (1955).
Appellants argue that if one were to accept the examiner’s
position that the teachings of Groepper suggest to use those
particular classes of compounds in combination for the same
purpose, and to ignore the express teaching of Groepper that he
intends not to make that combination, one still is left with the
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