Appeal 2007-1118
Application 10/237,089
191, 196 (Fed.Cir.1984)). The question here, we emphasize, is a question of
evidence and the burden is on the Appellants to show unexpected results. In
re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
Further, the data relied upon by Appellants is not commensurate in
scope with the claimed invention See In re Greenfield, 571 F.2d 1185, 1189,
197 USPQ 227, 230 (CCPA 1978) (“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'.” (quoting In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294
(CCPA 1971)). Appellants test only a few compositions, as exhibited in the
Declarations. Appellants have presented test data for only carbon coatings
whereas the claims are inclusive of all conductive coatings. The data
presented does not present examples that represent all of the particle sizes
encompassed by the claimed invention. Appellants also have not explained
why the few examples presented are representative of the entire scope of the
claimed invention.
IV. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED
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