Appeal No. 2006-1391
Application No. 10/168,806
For the foregoing reasons, we determine that the claimed subject matter is prima
facie obvious in view of the reference evidence. Appellants have argued that they have
shown “unexpected advantages” for the claimed pore size ratios (Brief, pages 9-10).
Therefore, we begin anew and consider all evidence for and against obviousness. See
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Appellants argue that their Example and Comparative Examples 1-3 found on
pages 5-7 of the specification establish “unexpected advantages” (Brief, page 9). We
are not persuaded since the comparative showing is not commensurate in scope with
the subject matter sought to be patented. See In re Boesch, 617 F.2d 272, 276, 205
USPQ 215, 219 (CCPA 1980). Appellants’ Example 1, allegedly representative of the
claimed subject matter, is limited to a pore size ratio of 2.25 (specification, page 6, l. 19)
while claim 1 on appeal has a lower limit of a 1.3 pore size ratio. Although Comparative
Example 1 has a pore size ratio of 1.0, similar to the teaching of van Reis, we find no
comparative showing of this example with an example directed to the lower end of
appellants’ claimed range.
Accordingly, based on the totality of the record, including due consideration of
appellants’ arguments and evidence, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of section 103(a).
Therefore we affirm the rejection of claims 1-6 under section 103(a) over van Reis.
Since our rationale differs significantly from that advanced by the examiner, we
denominate this “affirmance” as a new ground of rejection where appellants may avail
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