Appeal No. 2001-0233
Application 08/668,640
nonobviousness must be commensurate in scope with the claims which the evidence is
offered to support. In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA
1980); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978).
The proposed evidence is defective in a plurality of ways and fails to establish
either criticality of the claimed ranges or provide sufficient evidence of unexpected
results to rebut the prima facie case of obviousness.
First, the evidence in the specification has not been explained in any meaningful
way which would tend to support a finding of criticality of the claimed ranges (or, for that
matter, as evidence of nonobviousness as unexpected results). The sole explanation is
found on page 2, line 15 to page 3, line 1 of the Reply Brief. In this explanation, it is
urged that:
First, Appellants point to the ‘759 patent, column 9, line 55 to column 10, line 34
and column 11, lines 5-43 where the effect of the particle size and ratio is clearly
shown. Second, Appellants point to tables 1-5 on pages 14-18 of the instant
application which show the micropore volume and surface area results obtained
using the instant invention. Appellants assert that simple logic dictates that since
these results correlate with those in the ‘759 and all the components of the two
compositions are the same except the type of particulate material (i.e., silicon
versus non-silicon containing), then, one skilled in the art would realize that the
effect of said particulate material is the same in the instant invention as it was in
the ‘759 patent. Hence, there is parallel performance in that both the ‘759 patent
and the instant invention produce a microporous ceramic product having a
surprisingly high surface area and micropore volume (see claim 1 of instant
invention, last three lines).
We, like the Examiner, are unpersuaded by this argument. First, attorney
argument regarding “simple logic” and “parallel performance” is not evidence. Second,
the specification itself notes that “another factor which influences both surface area and
the degree of microporosity which can be achieved in the microporous ceramic is the
final temperature to which the ceramic is heated” (Specification, page 12, lines 19-23).
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