Appeal No. 2006-0440
Application No. 10/291,933
appealed claims read on a method for applying any polymeric
reaction mixture on any substrate under virtually any set of
conditions. Thus, the proffered showing is not commensurate in
scope with the claims. In re Kulling, 897 F.2d 1147, 1149, 14
USPQ2d 1056, 1058 (Fed. Cir. 1990)(“‘[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.”).
Further, the appellants have not met their burden of
establishing that one of ordinary skill in the art would have
considered the differences in results to be truly unexpected.
In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA
1971)(holding that the appellants failed to rebut a prima facie
case of obviousness where the asserted differences between the
claimed foams and prior art foams were not shown to be
significant); In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139,
143 (CCPA 1973)(explaining that in order for a showing of
unexpected results to be probative evidence of nonobviousness,
an applicant must establish (1) that there actually is a
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