Appeal No. 2006-0977
Application 10/250,605
represent a comparison with the closest prior art , and it is 1
reasonable to conclude that the epoxy resin composition fairly
taught by Japanese ‘306 which comprise the claimed thiophenol would
also exhibit the same properties. Lacking in the specification data
argued by appellants is a meaningful comparison between compositions
fairly taught by Japanese ‘306 and epoxy resin compositions
comprising biphenol epoxy resins within the scope of the appealed
claims.
Also, appellants have not refuted the examiner’s statement that
“nowhere in the specification or examples is there any corroboration
of the allegation that it is the combination of the thiodiphenol and
tetramethylbiphenol epoxy resin that imparts moldability, solder
crack resistance and flame retardancy [and that] [t]he instant
specification on page 3, lines 6-8 attributes only low moisture
absorption and low stress properties to a biphenol epoxy resin”
(page 7 of answer, first paragraph).
Moreover, appellants have not demonstrated that the
specification evidence is commensurate in scope with the degree of
1In re Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260, 1263-
64 (Fed. Cir. 1984).
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