Appeal No. 1999-0310 6
Application No. 08/225,267
As each of the examples in the Declaration contain nine or ten components, and
being cognizant of the appellants statement that mixtures of at least three components are
needed to meet the requirements of the invention, we conclude that a showing of nine or
ten mixed components are not commensurate in scope with the claimed subject matter,
which requires no more than, “a mixture of polar compounds.” See claim 1.
Moreover, as declarant Plach has stated with respect to the above-described
properties that, “each compound exerts an influence on more than one of the above
mentioned properties; . . . .” and that no single compound fulfills each of these
requirements, how can a single base mixture containing a mixture of 10 compounds be
representative of the prior art as a whole or commensurate in scope with a claim requiring
only two compounds, i.e. , “ a mixture.” See the Plach Declaration, p. 2.
Finally, the appellants have argued that, “Example II is directly comparative with
Example I, but the cyclohexylene compounds have been replaced by the same amount of
the two cyclohexenylene compounds in accordance with the invention.” See Brief, p. 10.
Although the appellants allege that Examples I and II of the Plach Declaration are a side-by-
side comparison between the claimed invention and the closest prior art, we find that the
declarant has not shown that other than the unsaturation present in the ring, the
compounds are otherwise identical in all respects. Neither the appellants nor the declarant
have explained the acronyms presented with respect to each of the compounds listed as
numbers 1 through 8. See the Plach Declaration, pp. 3 and 4. What is the meaning of 3
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