Appeal 2007-4099
Application 09/962,935
deionized water and activating the compacted particles at a temperature of
500ºC. Thus, we concur with the Examiner that the Appellant has not
compared the claimed subject matter with the closest prior art (Klabunde).
In re Burckel, 592 F.2d 1175, 1180, 210 USPQ 67, 71 (CCPA 1979)(the
claimed subject matter must be compared with closest prior art in a manner
which addresses the thrust of the rejection); In re Dunn, 349 F.2d 433, 439,
146 USPQ 479, 483 (CCPA 1965)(“[W]e do not feel it an unreasonable
burden on appellants to require comparative examples relied on for non-
obviousness to be truly comparative. The cause and effect sought to be
proven is lost here in the welter of unfixed variables.”). In other words, we
cannot determine whether Klabunde’s pellets are patentably different from
those claimed or unexpectedly inferior to those claimed.
Even if the Schlegel Declaration shows preparing the pellet taught by
Klabunde, the Appellant still has not demonstrated that the showing in
Specification Example 2 is reasonably commensurate in scope with the
protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731,
743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029,
1035, 206 USPQ 289, 296 (CCPA 1980). While the showing in the
Specification Example 2 is limited to pellets produced by granulating the
product formed from specific compounds and FeOOH under specific
conditions, the claims on appeal are not so limited. The Appellant has not
demonstrated that the pellets encompassed by the claims on appeal,
including those resulting from mechanically shaping (compacting) wet iron
oxide from an aqueous suspension (without the compounds used in Example
2) have the same properties as that shown in Specification Example 2.
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