Appeal No. 94-2441
Application 07/821,314
than a resin having a melt index of 100 at 190EC. See footnote
4. We therefore conclude that the examiner has correctly
determined that the claimed ranges of acid value and melt
viscosity fall within or substantially overlap the respective
ranges described for El-Sayed’s toner resin component. We
therefore agree with the examiner that a strong prima facie case
of obviousness has been established for the claimed subject
matter. See In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549,
553 (CCPA 1974) and In re Orfeo, 440 F.2d 439, 440, 169 USPQ 487,
488 (CCPA 1971). Indeed, appellants state at page 2 of their
Reply Brief filed March 3, 1994 that
...at best the El-Sayed et al reference presents a
rebuttable showing of prima facie obviousness of the
presently claimed invention.
When an applicant seeks to overcome a prima facie case of
obviousness by showing improved performance in a range that is
within or overlaps with the range disclosed in the prior art, the
applicant must “show that the [claimed] range is critical,
generally by showing that the claimed range achieves unexpected
results relative to the prior art range.” In re Woodruff, 919
F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Here,
appellants submit that the evidence of record allegedly showing
the criticality of the claim parameters is more than sufficient
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