Appeal No. 2007-1237
Application No. 10/813,367
carbon particles (Example 1). In re Baxter Travenol Labs., 952 F.2d 388, 392,
21 USPQ2d 1281, 1285 (Fed. Cir. 1991)(The “difference in results” must be
established as being between the claimed subject matter and the closest prior art.).
The data relied upon by Appellants is also not commensurate in scope with
the claimed invention. See In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227,
230 (CCPA 1978) (AEstablishing 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 tables of the specification. However, the claims on appeal are
much broader. The claimed subject matter encompassed all combinations of
carbon particles and carbon nanotubes. According to Appellants, the results
achieved for the composition of Example 8 is unexpected; however, the results
achieved for Example 7 (a composition comprising the combination of carbon
nanotubes and carbon particles) are not superior in all categories (See Specification
16).1 Appellants have not demonstrated that the alleged results can be reasonably
extrapolated for all cables comprising (a) polyethylene, polypropylene or mixtures
thereof; (b) carbon nanotubes; and (c) a conductive carbon black.
Claims 2, 3, 6 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Delphin et al. in view of Smalley et al. as applied to claim 1
above, and further in view of Bums, Jr. Appellants have also not presented
1 We also recognize that the amount of polymer components and processing aid
vary based upon the individual examples (See Table 1). Thus, it cannot be said
that the results obtained are due solely to the presence of a combination of carbon
particles and carbon nanotubes.
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