Appeal No. 2005-1581 6
Application No. 09/681,692
Having reviewed the data in the specification2, we determine that the showing in
the specification is not commensurate in scope with the degree of protection sought by
the claimed subject matter. See In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778
(Fed. Cir. 1983); In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971). It is
well settled that "[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."). In the present case, the claimed subject
matter encompasses a chewing gum product that comprises a gum center that includes
a water insoluble portion that comprising at least 50% by weight of the gum center and
the gum center including less than 5% by weight of bulk sweeteners. However, the
alleged unexpected results are obtained by using a single gumball composition
produced from the formulation of Examples 2 and 6. (Specification, p. 11). Appellants
have not explained why this showing is commensurate in scope with the claimed subject
matter. In other words, Appellants have not directed us to evidence that establishes
why this single formulation presented in the specification would have been
representative of the scope of the claimed invention. See In re Boesch, 617 F.2d 272,
276, 205 USPQ 215, 219 (CCPA 1980). Moreover, Appellants have also not explained
2 Specification pages 9-11.
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