Appeal No. 2004-0378
Application No. 09/765,675
provides unexpected results.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687
(Fed. Cir. 1995).
However, “[t]he evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains.” In re Dill, 604
F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA 1979). “Commensurate in scope” means
that the evidence provides a reasonable basis for concluding that the untested
embodiments encompassed by the claims would behave in the same manner as the
tested embodiment(s). See In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358
(CCPA 1972) (“Here, only one mixture of ingredients was tested. . . . The claims,
however, are much broader in scope, . . . and we have to agree with the Patent Office
that there is no ‘adequate basis for reasonably concluding that the great number and
variety of compositions included by the claims would behave in the same manner as the
[single] tested composition.’”) (bracketed material in original).
In this case, Appellants have provided no evidentiary basis on which to conclude
that the data shown in the specification’s single example is representative of the full
scope of claim 1. The specification appears to show that a composition comprising,
among other things, 10% oil, 2.4% nonionic surfactants (PEG-400 isostearate and
Tween 20), 1.9% cationic surfactant (behenyltrimethylammonium chloride), and 0.95%
cationic polymer (Quatrisoft LM 200), when mixed together under specific conditions,
has superior properties compared to a similar composition comprising a crosslinked
acrylate polymer (Carbopol Ultrez). See pages 48-51.
Claim 1, however, encompasses oil-in-water nanoemulsions comprising any
amount of oil(s), any number and amount of surfactants (anionic, cationic, or nonionic),
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