Appeal No. 2001-0856
Application 09/143,947
overlap with the ranges for the same parameters disclosed in the applied prior art, the claimed
ranges will not patentably distinguish the claimed invention from the prior art unless the claimed
ranges are shown to be critical, such as by a showing of a new or unexpected result, thus shifting
the burden to appellant to establish the criticality of the claimed ranges. See generally, 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. [Citations omitted.] 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.]”); see also In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
Accordingly, based on the evidence in Spek, one of ordinary skill in this art routinely
working within the teachings of the reference would have arrived at the claimed process.
Accordingly, since a prima facie case of obviousness has been established Spek by the
examiner, we have again evaluated all of the evidence of obviousness and nonobviousness based
on the record as a whole, giving due consideration to the weight of appellant’s arguments. See
generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellant’s arguments. We recognize, as pointed out
by appellant (brief, page 8; reply brief, page 2), that Spek does not teach the exact solvent
blowing agent boiling point range specified in appealed claim 1. However, the claimed and
reference range clearly overlap from 40 to 50°C, and appellant has not presented objective
evidence or affective argument of the criticality of the solvent blowing agents therein.
Furthermore, we are not convinced that appealed claim 1 distinguishes over Spek because the
reference does not disclose the particular type of solvent blowing agent, since appealed claim 1
specifies any solvent blowing agent boiling in said range as we interpreted this claim above. We
find no basis in the plain language of appealed claim 1 on which to read any preferred
embodiment, substrate, polymeric binder or solvent blowing agent into the claim.
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