Appeal No. 2006-0139
Application No. 09/583,228
As the other embodiments of Morella also reflect relevant prior art teachings, we
agree with the examiner that the Declaration is not sufficiently comparative with either
the full breadth of the teachings of Morella, or indicative of the full scope of the pending
claims. We find the Board's determination in Ex parte Winters2 to be instructive here.
In Winters we stated:
... appellant is not required to test each and every species within
the scope of the appealed claims and compare same with the closest prior
art species. Rather patentability is established by a showing of
unexpected superiority for representative compounds within the scope of
the appealed claims. What is representative is a factual question which is
decided on a case-by-case basis.
11 USPQ2d at 1388. We do not find appellant has provided a sufficient showing of
nonobviousness or unexpected results, commensurate with the pending claim scope.
In addition, appellant is reminded that when relying on comparative testing, the
most effective comparison is between the claimed invention and the closest prior art.
See, In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979); In re Merchant, 575
F.2d 865, 197 USPQ 785 (CCPA 1978); Ex parte Beck, 9 USPQ2d 2000, 2002 (Bd.
Pat. App. & Int. 1987) (Acomparative evidence, to be effective, must compare the
claimed subject matter with the closest prior art''); Ex parte Meyer, 6 USPQ2d 1966,
1968 (Bd. Pat. App. & Int. 1988) (AAn applicant relying upon a comparative showing to
rebut a prima facie case of obviousness must compare his claimed invention with the
2 Ex parte Winters, 11 USPQ2d 1387 (Bd Pat App Int 1989).
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