Appeal No. 2006-0230 Page 13
Application No. 09/864,083
represent a viable cosmetic formulation due to it not discoloring, indicating a
stable formulation….”
Based on this evidence appellants assert (Brief, page 11, emphasis
removed), “[o]ne of ordinary skill in the art would not expect the combination of
the active agents in these unstable formulations to result in a stable, cosmetically
pleasing formulation.” Therefore, appellants assert (id.), “as compared to
Lukenbach’s embodiments, the stability and resulting pleasing aesthetics of the
present invention are unexpected in the applicant’s [sic] invention and is not
rendered obvious by Lukenbach and Gordon.”
We note, however, that while appellants prepared the compositions of
Lukenbach at a pH of 7.5, they prepared the comparative composition of their
claimed invention at a pH of about 5.70-5.80. According to appellants’ claim 1,
the composition has a pH of about 5.5 to about 8.0. The pH of the compositions
disclosed by Lukenbach is within the range recited in appellants’ claim 1.
Accordingly, it is unclear why appellants elected to compare Lukenbach’s
compositions, which have a pH of 7.5, to a composition having a pH of about
5.70-5.80. In this regard, we remind appellants that in order to establish
unexpected results for a claimed invention, objective evidence of non-
obviousness must be commensurate in scope with the claims that the evidence
is offered to support. In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230
(CCPA 1978); In re Lindner, 59 CCPA 920, 923, 457 F.2d 506, 508, 173 USPQ
356, 358 (1972); In re Tiffin, 58 CCPA 1420, 1421, 448 F.2d 791, 792, 171
USPQ 294 (1971). On this record, there is no evidence that a composition
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