Appeal No. 2003-1960
Application No. 09/830,841
overlapping ranges, our reviewing and predecessor court have
consistently held that even a slight overlap in range establishes a
prima facie case of obviousness. See In re Geisler, 116 F.3d 1465,
1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997)(acknowledging that a
claimed invention was rendered prima facie obvious by a prior art
reference whose disclosed range (50 to 100 Angstroms) overlapped
the claimed range (100 to 600 Angstroms)); In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990)(concluding
that a claimed invention was rendered obvious by a prior art
reference whose disclosed range (about 1-5% carbon monoxide)
abutted the claimed range (more than 5% to about 25% carbon
monoxide)); and In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549,
553 (CCPA 1974)(concluding that a claimed invention was rendered
prima facie obvious by a prior art reference whose disclosed range
(0.020-0.035% carbon) overlapped the claimed range (0.030-0.070%
carbon)).
Thus, in view of the above authority, we determine that the
examiner’s mere establishment of overlap in one range of the
reactants used to form the claimed and prior art products does not
alone meet the initial burden of proof or establish a factual
foundation sufficient to support a prima facie case of
anticipation. Accordingly, we cannot sustain the examiner’s
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