Appeal No. 2003-0819
Application No. 09/872,928
obviousness.3 While the disclosures of the references are
admittedly generic to many possibilities, so too is the
invention recited in the appealed claims.
Without any specific analysis, the appellants allege that
the Zeren declaration provides evidence of nonobviousness over
the applied prior art references. We disagree for at least two
significant reasons.
First, the declaration evidence does not include a
comparison between the invention recited in appealed claim 14 or
25 against the closest prior art.4 For example, we point out
that the polymeric component used in the examples of the
declaration is a “carboxylic acid-functional polyester resin,”
which is not recited in the appealed claims. In addition, the
comparative examples are not reflective of the class of
compositions described in Ertl, Malik, or Valet.
Second, the relied upon showing is far from being
commensurate in scope with the broad patent protection sought by
3 Merck & Co. Inc. v.Biocraft Labs. Inc., 874 F.2d 804,
807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989)(“That the [prior art
reference] discloses a multitude of effective combinations does
not render any particular formulation less obvious.”).
4 In re Baxter Travenol Labs, 952 F.2d 388, 392, 21 USPQ
1281, 1285 (Fed. Cir. 1991) (“[R]esults must be shown to be
unexpected compared with the closest prior art.”).
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