Appeal No. 2005-2508
Application No. 09/874,314
compositions (see appellants’ specification, page 10; EP ‘585,
page 3, ll. 5-6; and Dobashi, col. 5, ll. 4-7).
Appellants assert that the Inoue Declaration establishes
that the present invention provides unexpectedly superior results
relative to Dobashi in terms of the fouling property (Brief, page
16). However, to constitute an effective comparison, the
examples 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 specific adhesive composition
(PIB) and tackifier compared in Example 1 (Clearon K100;
Declaration, page 2) is clearly not commensurate in scope with
the broad generic terminology of claim 1 on appeal. Furthermore,
Rule 132 Declarations must compare the claimed subject matter
with the closest prior art to be effective. See In re Burckel,
592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979). The claimed
subject matter compared is a specific hydrogenated terpene
copolymer (Declaration, page 2) while the resin used from Dobashi
is not hydrogenated (id.; YS RESIN PX 1150). Although Dobashi
exemplifies this tackifier resin (col. 12, Table 1, *5), Dobashi
also exemplifies a hydrogenated terpene tackifier (YS POLYSTER
T115, a hydrogenated terpene-phenol resin tackifier; col. 21, ll.
5-6). Accordingly, we determine that the hydrogenated tackifier
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007