Appeal 2007-4259
Application 10/417,752
only been added to some of the compositions in amounts of 20% (5
examples) and 16% (1 example). The claimed invention is not limited to
these relatively few binder compositions. The Declarant has not explained
why these relatively few examples are representative of all the binder
compositions encompassed by the presently claimed invention. Moreover,
the Declarant has not explained how the addition of 20% and/or 16% of an
opacifying agent is representative of the range encompassed by the
independent claim. “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.’” In re Greenfield,
571 F.2d at 1189, 197 USPQ at 230 (quoting In re Tiffin, 448 F.2d 791, 792,
171 USPQ 294, 294 (CCPA 1971)). Appellants have not explained why the
few examples presented are representative of the entire scope of the claimed
invention. 5
The question as to whether unexpected advantages have been
demonstrated for the claimed subject matter is a factual question. See In re
Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
Thus, it is incumbent upon the Appellants to supply the factual basis to rebut
the prima facie case of obviousness established by the Examiner. See, e.g.,
In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). In this
5 Regarding the subject matter of claims 5, 8, and 15, the arguments and
evidence presented is not sufficient evidence of unobviousness for the
reasons set forth above.
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