Appeal No. 2004-1861
Application No. 09/846,483
salicylate having a TBN of 280, and 0.61 part of a zinc
dialkyldithiophosphate made from a primary C8 alcohol, appealed
claim 1 is significantly broader. Thus, we agree with the
examiner (answer at 5-6) that the proffered showing is not
commensurate in scope with the degree of patent protection
desired. 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.”).
The appellants contend that Clarke constitutes non-
analogous art because its disclosure “would not have been
considered relevant by one of ordinary skill in the art
attempting to formulate a TPEO.” (Appeal brief at 5.) This
position lacks discernible merit.
The two separate tests for determining whether a prior art
reference is analogous is as follows: (1) whether the art is
from the same field of endeavor, regardless of the problem
addressed; and (2) if the reference is not within the inventor’s
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