Appeal No. 1997-2958 15
Application No. 08/401,719
(CCPA 1973), 177 USPQ 139, 143; In re D'Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306
(CCPA 1971); Ex parte Karol, 8 USPQ2d 1771, 1774 (Bd. Pat. App. & Int. 1988).
Rebuttal Evidence
Once the examiner has made a reasonable rejection under obviousness, applicants can rebut
the prima facie case with a showing of criticality. "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 . . . .
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." In re Woodruff, 919
F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Appellants argue that sodium and calcium levels above 3 ppm and 5 ppm, respectively, result in
adverse effects in the alloys as discussed on pages 13 and 14 of the specification and points to the
comparative example of lot 13 present in Tables A, B, and C on pages 26, 28 and 30 of the
specification, presumably as objective evidence of criticality. In regard to the statement made on pages
13 and 14 that levels of sodium higher than 3 ppm and levels of calcium higher than 5 ppm generate
cavitation, this is merely a conclusory statement in the specification.
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