Appeal No. 2006-1750 Παγε 13
Application No. 10/435,175
analyzed. The cause-and-effect relationship which appellants
desire to show between step wise and simultaneous palladium and
gold addition is lost in such a welter of unfixed variables. See
In re Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966);
In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483 (CCPA 1965).
Thus, a comparison between the PO equivalent products (POE), as
referred to in Example 4 and the PO product (propylene oxide) as
measured in Example 7 cannot be fairly made.4 Hence, we are
not satisfied that the evidence of record that is offered for
comparison, as discussed in the briefs, demonstrates results that
are truly unexpected over the closest prior art for reasons set
forth above and in the answer. Nor have appellants satisfied
their burden of explaining how the results reported for the
limited tests presented can be extrapolated to substantiate
appellants’ contentions for the invention as broadly claimed.
Thus, the examiner correctly notes (answer, pages 10 and 11) that
appellants have not satisfied the well established criterium that
the evidence relied on to establish unobviousness must be
commensurate in scope with the claimed subject matter. See In re
Kerkhoven, 626 F.2d 846, 851, 205 USPQ 1069, 1072-73 (CCPA 1980)
4
4 The POE products include not only PO but also PG
(propylene glycol), DPG (diphenylguanidine) and acetol according
to appellants. See Example 4 of the specification.
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