Appeal 2007-4101
Application 09/962,972
compacting wet or dry metal oxide or metal hydroxide powder made from
an aerogel or deionized water and activating the compacted particles at a
temperature of 500ºC. Thus, we concur with the Examiner that the
Appellants have 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 Appellants still have 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 no so limited. The Appellants have not
demonstrated that the multifarious 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
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