Appeal No. 2005-2453
Application No. 10/102,923
the very limited comparative showing. For one, appellants have
not established on this record that the comparative results would
be considered truly unexpected by one of ordinary skill in the
art. In re Merck & Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381
(Fed. Cir. 1986). We subscribe to the examiner's reasoning that
it would seem that it would be expected that "having the hard
carbon film on all surfaces would provide better wear resistant
[sic, resistance] to all surfaces, since the hard carbon film is
one continuous film" (page 7 of Answer of December 30, 2004,
third paragraph). Appellants have not rebutted the examiner's
reasoning that "since there are no exposed edges of the coatings,
the surface would be less susceptible to chipping or flaking or
scuffing of the coating" (id.).
Furthermore, the limited comparison is hardly commensurate
in scope with the degree of protection sought by the appealed
claims. In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778
(Fed. Cir. 1983). While claim 1 on appeal encompasses a
considerable breadth of films comprising either silicon, tungsten
or nickel, alone, or a myriad of two- or three-component
compositions of the three recited components in any non-specified
range of amounts, Example 1 of the specification is a very
specific film containing only silicon in an amount of 69.4 wt.%.
Although appellants state that "[t]he examples were not presented
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