Appeal No. 2004-0777 Page 8
Application No. 09/731,726
declaration/affidavit of a qualified expert but merely assert
such by way of attorney argument in the briefs. Moreover, the
specification test results are not reasonably commensurate in
scope with the here claimed invention. We note that the
specification examples and tables relate to solder alloys used in
the specific manufacturing steps depicted in drawing figures 4A
to 4G as set forth at page 12 of the specification.
Representative claim 1 is not limited to the specific electrode
layer and flip-chip bonding that is associated with such test
results as outlined in the specification description of drawing
figures 4A- 4G and as referenced in the examples of the
specification as evident by a comparison of representative claim
1 with appellants’ specification. Thus, it is apparent that
appellants’ evidence is considerably more narrow in scope than
the representative appealed claim 1. See In re Dill, 604 F.2d
1356, 1361, 202 USPQ 805, 808 (CCPA 1979).
Moreover, appellants simply have not shown that the examples
prepared for comparison represent the closest prior art. Hence,
we are not satisfied that the evidence of record that is offered
demonstrates results that are truly unexpected and commensurate
in scope with the claims. Nor have appellants satisfied their
burden of explaining how the results reported for those limited
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