Appeal No. 1998-2328
Application No. 08/560,138
OPINION
The examiner admits that Robertson does not teach the
“exact composition” as recited in the method of claims 18 and 19
on appeal (Answer, page 4). However, the examiner concludes
that the claimed compositions would have been obvious “because
close approximation ranges in a composition is considered to
establish a prima facie case of obviousness.” Answer, page 5.
The examiner submits that the “close approximation and overlap”
of components of the composition establish obviousness, citing
In re Malagari, Titanium Metals [sic, Corp.] v. Banner, and In
re Nehrenberg (Answer, page 6, with citations therein).
As correctly argued by appellants on pages 11-14 of the
Brief (see also the Reply Brief), Titanium Metals held that a
prima facie case of obviousness is established when “[t]he
proportions are so close that prima facie one skilled in the art
would have expected them to have the same properties.” Titanium
Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779
(Fed. Cir. 1985). See also In re Geisler, 116 F.3d 1465, 1469,
43 USPQ2d 1362, 1365 (Fed. Cir. 1997); and Haynes Int’l, Inc. v.
Jessup Steel Co., 8 F.3d 1573, 1577 n.3, 28 USPQ2d 1652, 1655
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