Appeal No. 2005-0440
Application No. 09/994,075
bleaching treatments would not result in some inhibition of
darkening. On this point, we note that the paper produced in WO
’308 exhibited brightness values significantly higher (59.3)
than those reported for the claimed invention in Table 3 of the
specification (56.8 and 57.5).
Moreover, the relied upon evidence is far from being
commensurate with the appealed claims. Specifically, Example V
of the specification is limited to pre-treatment with 0.5 and 1%
sodium sulfite (4% cs., 85°C, 2 hours) followed by treatment with
7.0% hydrosulfite (3.7% cs., 60°C for 40 minutes) at a pH of 7.0.
By contrast, appealed claim 1, is considerably broader in scope
in terms of the sulfite compound, additional bleaching agent,
the treatment conditions and duration, and the nature of the
pulp slurry. 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.”).
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