Appeal No. 2003-0819
Application No. 09/872,928
appealed claim 14 or 25.5 The examples in the declaration are
limited to a specific polymer, a specific phosphorus compound,
and a specific mixture of two stabilizer compounds (Va) and (Vb)
in specified amounts. The appealed claims, on the other hand,
are not reasonably limited to be commensurate in scope with this
proffered showing. Instead, the appealed claims embrace
thousands, if not millions, of possible combinations of
stabilizer compounds and polymers.
Regarding Malik, the appellants argue that “[t]here is not
a single example [] that shows the stabilization of a coating,
much less a powder coating.” (Appeal brief, page 8.) This
argument also fails. One of ordinary skill in the art would not
have considered the disclosures of the references to be limited
to their preferred embodiments or working examples. Merck, 874
F.2d at 807, 10 USPQ2d at 1846; In re Fracalossi, 681 F.2d 792,
794 n.1, 215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
5 In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058
(Fed. Cir. 1990) (“‘[O]bjective evidence of nonobviousness must
be commensurate in scope with the claims.’”)(quoting In re
Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972)); In
re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA 1979)
(“The evidence presented to rebut a prima facie case of
obviousness must be commensurate in scope with the claims to
which it pertains.”).
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