Appeal No. 2004-1586
Application No. 10/132,863
the Brief, pages 21 and 22. These alleged successes, however,
are not only unsupported by any objective evidence, but also do
not establish that the claimed subject matter results in any
commercial successes. Moreover, these allegations of successes
provide no details as to what items, i.e., the claimed or
unclaimed subject matter, are responsible for winning first or
second prizes.
In addition to the above deficiencies of the secondary
evidence relied upon by the appellant, we find that such evidence
is not commensurate in scope with the claims on appeal. 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”).
While the showing in the declarations is limited to using a
combination of key chain and a card having oil change discounts,
the claims on appeal are not so limited. The claims on appeal
encompass a combination of a key chain and a card not involving
any discount incentives shown in, e.g., the declarations.
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