Appeal No. 2001-2470 Page 8
Application No. 08/890,134
results must also be commensurate in scope with the claimed
subject matter. See In re Boesch, supra; and In re Payne, 606
F.2d 303, 315-16, 203 USPQ 245, 256 (CCPA 1979). Appellants’
comparative data is limited to a showing of specific copolymers
with endblocks having molecular weights above 14,700 and specific
midblock compatible resins and oil at ratios of at least 2.5:1
(see the Brief, page 5, and the specification, Table 1 and page
24). Claim 1 on appeal is not so limited, including many
different elastomeric block copolymers with endblock molecular
weights as low as 13,000, and many different tackifying
components, including midblock compatible resins and oils at
weight ratios as low as 120:100 (see claim 1 on appeal).3
Therefore we determine that the showing submitted by appellants
is not commensurate in scope with the subject matter sought to be
patented.
For the foregoing reasons and those set forth in the Answer,
we determine that the evidence submitted by appellants is not
persuasive of non-obviousness. Based on the totality of the
record, including due consideration of appellants’ evidence and
arguments, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of
3In the event of continuing prosecution before the examiner, the examiner and appellants
should review the basis in the written description under the first paragraph of 35 U.S.C. § 112 for
the claimed weight ratio of “at least” 120:100 (see the specification, page 13, ll. 12-14).
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