Appeal No. 98-1922 Page 15
Application No. 08/253,721
USPQ 215, 219 (CCPA 1980) and In re Aller, 220 F.2d 454, 456,
105 USPQ 233, 235 (CCPA 1955). As stated in In re Huang, 100
F.3d 135, 139, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996):
This court and its predecessors have long held,
however, that even though applicant's modification
results in great improvement and utility over the
prior art, it may still not be patentable if the
modification was within the capabilities of one
skilled in the art, unless the claimed ranges
"produce a new and unexpected result which is
different in kind and not merely in degree from the
results of the prior art."
Additionally, as stated in In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990):
The law is replete with cases in which the
difference between the claimed invention and the
prior art is some range or other variable within the
claims. . . . These cases have consistently held
that in such a situation, the applicant must show
that the particular range is critical, generally by
showing that the claimed range achieves unexpected
results relative to the prior art range [citations
omitted].
In the present case, however, the appellants have not
even alleged, must less established, that the claimed material
or thickness produces unexpected results. Accordingly, the
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