Appeal No. 1999-2201
Application No. 08/704,063
the examiner (Answer, pages 7-8), the amount of inhibitor used in
every example varies and therefore there is no way to determine
if the different results are due to the type or amount of the
inhibitor. See In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483
(CCPA 1965).
As also noted by the examiner (Answer, page 10), to be
effective a comparative showing must be made with the closest
prior art. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67,
71 (CCPA 1979). The comparative inhibitor in all of appellants’
data is 3,5-dimethyl-1-hexyn-3-ol, and appellants have not
established that this acetylenic alcohol is the closest prior art
representative of both Kurita and Keryk.
Additionally, any comparative showing must be commensurate
in scope with the claimed subject matter. See In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Appellants have
not shown that the examples, which are limited to specific
compounds in specific amounts, are commensurate in scope with the
claims which are not so limited (see the Answer, page 8).
Finally, expected beneficial results are evidence of
obviousness just as unexpected beneficial results are evidence of
unobviousness. See In re Skoner, 517 F.2d 947, 950, 186 USPQ 80,
82 (CCPA 1975). Keryk teaches that beneficial results would have
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