Appeal No. 1998-1672
Application No. 08/708,163
although the specific example at column 43 does not include
a pH of from about 9.3 to 9.7, column 24, lines 11-12,
discloses a more preferred amount of from 9.0 to 11.0. We
note that it is not invention to discover optimum or
workable ranges by routine experimentation. Where general
conditions of the appealed claim are disclosed in the prior
art, it is not inventive to discover optimum or workable
ranges by routine experimentation, and appellants have the
burden of proving any criticality. In re Boesch, 617 F.2d
272, 276, 205 USPQ 215, 218-19 (CCPA 1980); In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Once a prima facie case of obviousness is established
by the examiner, as in the present case, the burden shifts
to appellant to rebut it. In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). A prima facie
case of obviousness is rebuttable by proof that the claimed
invention possesses unexpectedly advantageous or superior
properties. In re Papesch, 50 CCPA 1084, 1091-92, 315 F.2d
381, 386-87, 137 USPQ 43, 47-48 (CCPA 1963). As rebuttal
evidence, Appellant refers to the data on pages 17-20 of
this specification. This data is insufficient to rebut the
prima facie case of obviousness for the following reasons.
Rebuttal evidence can be in the form of direct or
indirect comparative testing between the claimed invention
and the closest prior art. In re Merchant, 575 F.2d 865,
869, 197 USPQ 785, 788 (CCPA 1978); In re Blondel, 499 F.2d
1311, 1317, 182 USPQ 294, 298 (CCPA 1974); In re Swentzel,
42 CCPA 757, 763, 219 F.2d 216, 220, 104 USPQ 343, 346
(1955). In the present case, the data on pages 17-20 is
not compared with the closet solution disclosed in
Fujimoto.
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