Appeal No. 2005-1104
Application No. 09/795,211
1382 (Fed. Cir. 2003); see also In re Geisler, 116 F.3d 1465, 1469-
70, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997).
Appellants argue that any prima facie case of obviousness has
been rebutted by the showing of unexpected results found on page 12
of the specification (Brief, page 13; Reply Brief, pages 3-6).
This argument is not persuasive. As correctly stated by the
examiner (Answer, page 8), any showing of unexpected results must
be commensurate in scope with the subject matter sought to be
patented. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980). The showing on page 12 of the specification is
limited to one specific enzyme (Natalase®) in a very specific
detergent formulation (see Table 1 on pages 10-11 of the
specification) while claim 1 is not so limited. Furthermore, an
effective comparison must include the closest prior art, and
appellants have not identified any example of B-F ‘562 as included
in the showing. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ
67, 71 (CCPA 1979); see also In re Geisler, supra. Additionally,
all variables must be fixed with the exception of one to establish
the non-obviousness of that variable. See In re Dunn, 349 F.2d
433, 439, 146 USPQ 479, 483 (CCPA 1965). Some of the comparisons
recited in Table 2 on page 12 of the specification have more than
one variable (e.g., formulas 4 and 5 differ as to the enzyme as
5
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