Appeal 2007-0504
Application 10/700,078
commensurate in scope with the invention recited in claim 2. As the
Examiner indicates in Table 2 on page 7 of her Answer, Appellants’
Examples 1 and 2 and Comparative Examples A, B, C, and D are directed to
only one type of acrylic emulsion polymer made with specific monomers,
initiator, and neutralizer, whereas claim 2 recites the monomers, initiator,
and neutralizer in generic language (e.g., “thermal initiator” or
“monoethylenically unsaturated acid monomer”) (Answer 7, Table 2; claim
2). Objective evidence of nonobviousness must be commensurate in scope
with the claims the evidence is offered to support. In re Grasselli, 713 F.2d
731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983) (Claims were directed to
certain catalysts containing an alkali metal. Evidence presented to rebut an
obviousness rejection compared catalysts containing sodium with the prior
art. The court held this evidence insufficient to rebut the prima facie case
because experiments limited to sodium were not commensurate in scope
with the claims).
Moreover, the amounts of the thermal initiator, the neutralizer, and the
monomers used to make the emulsion polymer are claimed in terms of
ranges (claim 2). However, data recited in Examples 1 and 2 and
comparative examples A, B, C, and D provide data for only a single value
within the range for each of the components of the emulsion polymer
(Answer 7, Table 2; claim 2). Therefore, Appellants have not shown that the
disclosed improvement in scrub resistance (i.e., unexpected results) occurs
over the entire range of values for the claimed aqueous coating composition
such that the claimed aqueous coating composition differs from Friel’s
aqueous coating composition over the entire range. In re Peterson, 315 F.3d
8
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