Appeal 2007-1118
Application 10/237,089
present examples that represent all of the particle sizes encompassed by the
claimed invention. “Establishing that one (or a small number of) species
gives unexpected results is inadequate proof, for ‘it is the view of this court
that objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support.’” In re Greenfield,
571 F.2d at 1189, 197 USPQ at 230 (quoting In re Tiffin, 448 F.2d 791, 792,
171 USPQ 294, 294 (CCPA 1971)). Appellants have not explained why the
few examples presented are representative of the entire scope of the claimed
invention.
Based on the totality of record, including due consideration of the
Appellants’ arguments and evidence, we determine that the preponderance
of evidence weighs most heavily in favor of obviousness within the meaning
of 35 U.S.C. § 103. Accordingly, we sustain the rejection of claim 1 and
those claims standing or falling therewith.
Appellants argue claim 4 separately. According to Appellants, claim
4 is limited to a carbon coating, and the Fukuoka Declarations even more
strongly support the patentability of claim 4 because these Declarations
report data on carbon coatings (Br. 16). The evidence is insufficient
because, as explained above, Appellants have not shown that the result
would have been unexpected to one of ordinary skill in the art.
With respect to claims 2, 3, 5-8, 13, 14, and 16-20 Appellants argue
that none of the features of these claims are disclosed by the cited references
(Br. 15-16). There is no sufficiently specific argument to address nor is the
Examiner’s specific reasoning disputed (Answer 4-5) and, therefore, we
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