Appeal 2007-2049
Application 10/475,223
obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1371, 82 USPQ2d at
1338.
We also note that Appellants have not explained how the data reflects
a comparison with the closest prior art; nor have they explained how the
comparison of one or two compounds within each of the broad genera of
claimed compounds reflects data that is commensurate in scope with the
claims. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.
Cir. 1984) (“an applicant relying on comparative tests to rebut a prima facie
case of obviousness must compare his claimed invention to the closest prior
art.”); and 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.’”).
III. CONCLUSION
Appellants have not overcome the Examiner’s rejection by either
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with sufficient evidence of unexpected results.
IV. DECISION
The decision of the Examiner rejecting claims 4-10, 12, and 14-21
under 35 U.S.C. § 103(a) is affirmed.
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