Appeal No. 2002-2063
Application No. 09/635,093
have not compared the other, non-high boiling solvents of Furness.
See In re Simmons, 739 F.2d at 1575, 222 USPQ at 746 (" A nexus
between the merits of the claimed invention and evidence of
secondary considerations is required in order for the evidence to
be given substantial weight in an obviousness decision.").
Consequently, we find that, on balance, the praise,
properties, and commercial results are insufficient to overcome
the prima facie case of obviousness as they are not commensurate
in scope with the claimed subject matter In re Grasselli, 713 F.2d
731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980) and do not compare
the closest prior art.
Appellants’ Point 12: The Sherwood Patent (Appeal Brief,
page 27).
The appellants urge that the examiner erred in not
considering the teachings of the Sherwood patent. While we agree
that Sherwood is relevant in that it is “in line with the general
idea that the preferred solvent for the polyisocyanate component
is a high-boiling non-polar aromatic hydrocarbon” (Appeal Brief,
page 8, lines 23 et seq.), this teaching still does not overcome
the plain meaning of the teaching in Furness to use whatever
solvents are suitable. We therefore are not persuaded by this
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