Appeal 2007-0618
Application 10/618,936
We agree with the Examiner that the Examples relied upon by
Appellants are not commensurate in scope with the claimed subject matter
and fail to present a comparison with the closest prior art (Answer 7-8).
Appellants only rely on Example 1 from the Specification (Br. 3; see Table 3
on page 13 of the Specification). This Example is limited to specific
monomer compositions while the claims on appeal are not so limited,
including dependent claims 2 and 3 (Reply Br. 5). See In re Boesch,
617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Comparative
showings must compare the claimed subject matter with the closest prior art
to be effective. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67,
71 (CCPA 1979). The showing in Table 3 of the Specification only refers to
a “[c]ommercial silane-containing polyvinyl alcohol” but fails to identify the
specific composition of this alcohol (Answer 8).
For the foregoing reasons and those stated in the Answer, we do not
find Appellants’ evidence persuasive of non-obviousness. Therefore we
affirm the Examiner’s rejection of claims 1-15 under § 103(a) over Schilling
in view of Maruyama.
The decision of the Examiner is affirmed.
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