Appeal No. 2004-1835 Page 5
Application No. 09/919,118
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Note also In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F.2d 454, 456, 105
USPQ 233, 235 (CCPA 1955).
Appellants also argue that we erred in determining that their objective evidence of
nonobviousness is not commensurate in scope with the claims (Request, pp. 3-4). This is because,
according to Appellants, the classes of dopants involved are themselves reasonably well known in
the art, as are their individual performance attributes, as illustrated by the disclosures of the cited
prior art references. Therefore, according to Appellants, multiple examples are not required to
demonstrate individual effects (Request, p. 4).
Appellants’ data is directed to the LIK performance of the emulsions. What the prior art
indicates is that the claimed classes of dopants were known to affect speed and contrast, there is no
discussion in the references with regard to an effect, as a class, on LIK performance. Nor have
Appellants provided evidence that LIK performance is affected predictably within the classes. By
their nature, unexpected and surprising results are unpredictable. We emphasize that the burden is
on Appellants to show that the results are unexpected for the full range of the combinations of the
classes of dopants claimed. We agree that, in some instances, the probative value of a narrow range
of data can be reasonably extended to prove the unobviousness of a broader claimed range. See In
re Kollman, 595 F.2d 48, 56, 201 USPQ 193, 199 (CCPA 1979). For instance, the probative value
may be extended when one of ordinary skill in the art could ascertain a trend in the exemplified
data. Id. Here, the comparison of one combination of dopants within the broad formulas of claim 1
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