Appeal No. 2004-1836 Page 7
Application No. 09/590,815
and the claimed invention, such that the objective evidence should be considered in the
determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387, 1392, 7 USPQ2d 1222, 1226 (Fed. Cir.), cert. denied, 488 U.S. 956
(1988). The burden of proving a nexus is on the applicant or patent owner. Id. An
important aspect of the proof of nexus is that the "[o]bjective evidence of
non-obviousness must be commensurate in scope with the claims which the evidence is
offered to support." In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971);
In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); In re Kerkhoven,
626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) ("The comparative test data
offered by appellant as evidence of the superiority of this claimed method does not
rebut the prima facie case of obviousness because it is not commensurate in scope with
the claims."). The objective evidence is not commensurate with the claims if the claims
are broader than the scope of the objective evidence. See Tiffin, 448 F.2d at 792, 171
USPQ at 294 (evidence of commercial success and satisfaction of long-felt need with
respect to "cups" not commensurate with the scope of claims broadly reciting
"containers"); In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778-79 (Fed. Cir.
1983) (experiments purporting to show unexpected results using sodium are not
commensurate in scope with broad claims to a catalyst with "an alkali metal"). The
claims are broader in scope than the objective evidence if a limitation or element recited
in the claim is broader than the limitation or element in the objective evidence (see
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