Appeal No. 1999-0736
Application 08/167,581
“less than 2 microns, and the remaining reactants preferably have
an average particle size ranging from submicron to 2 microns”
(col. 6, lines 2 to 7). This disclosed range includes
appellants’ claimed range of 1 micron or less.
Where, as here, the difference between the claimed invention
and the prior art is some range or other variable within the
claims, “the applicant must show that the particular [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, 1936-37
(Fed. Cir. 1990). On page 8 of their brief, appellants assert
that “[t]he effect by [sic: of ?] the present invention is made
by the synergistic function of the particle diameter and the
degassing, and could not be expected by those skilled in the art
even if all cited references were combined,” and on pages 6 to 8
of their brief they describe experiments “[t]o prove the
criticality of the claimed particle size.” However, these
statements in the brief are insufficient to constitute such
evidence as would be required to establish criticality, since
they were not submitted in the form of an affidavit or
declaration under 37 CFR 1.132. In re Geisler, 116 F.3d 1465,
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