Appeal No. 2001-2093
Application No. 09/054,134
is not inventive to discover the optimum or workable ranges by
routine experimentation.”); see also In re Geisler, 116 F.3d
1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997)(explaining
that a claimed invention is rendered prima facie obvious when
the teachings of a prior art reference discloses a range that
touches or overlaps the range recited in the claim).
Once a prima facie case of obviousness is established, the
burden of going forward shifts to the applicants. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Mayne, 104 F.3d 1339, 1343, 41 USPQ2d 1451, 1455
(Fed. Cir. 1997).
The appellants argue that “the only illustrative experiment
using ethylene oxide [in DE ’715] was carried out at a
temperature of 30°C in the presence of concentrated sulfuric
acid...” (Appeal brief, page 3.) This argument is not
persuasive. One of ordinary skill in the art would have
evaluated the prior art disclosure as a whole, rather than
solely the working examples or preferred embodiments, because a
prior art disclosure is not limited to its working examples or
to its preferred embodiments. Merck & Co. Inc. v. Biocraft
Labs. Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.
1989); In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569,
570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ
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