Appeal No. 2002-1609
Application 09/129,238
the examiner that Fujinaga makes obvious the claimed invention
set forth in claim 14.
Turning now to the rebuttal evidence, appellants discuss
data (as mentioned above), but we agree with the examiner that
this data is insufficient to overcome the obviousness rejection,
for the following reasons.
The examiner states that appellants refer to Figures 2A
through 2E to establish that the steels of their instant claims
produce a grain structure which is more homogeneous and of an
equiaxed structure than steels outside the parameters of the
steel. However, the examiner correctly points out that the
outside parameters are steels containing 0.24% aluminum or more
(which is not representative of Fujinaga). The examiner also
states that the same applies to appellants discussion of Figures
5A to 5C, and Figure 6, and Table 4, wherein the outside
parameters are aluminum and/or carbon. The examiner correctly
concludes that the data discussed by appellants is unconvincing
because this data is not representative of the invention
disclosed in Fujinaga.
We agree with the examiner’s comments on appellants’ data,
and, in support of this determination, we note 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). We also note that in order to establish
unexpected results for a claimed invention, objective evidence of
non-obviousness must be commensurate in scope with the claims
which the evidence is offered to support. In re Clemens, 622
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