Appeal No. 2004-0052
Application No. 09/180,432
The examiner has found that the bulk density taught by
McCullough overlaps the bulk density range recited in claim 10 on
appeal (Answer, page 5). Appellants agree with the examiner that
claim 10 requires a bulk density of 3 to 10 kg/cubic meter while
McCullough discloses a range of bulk densities of 6.4 to 96
kg/cubic meter, but argues that this is “only slight overlap”
(Brief, page 14).4 This argument is not well taken since it is
well settled that even a slight overlap in ranges establishes prima
facie obviousness. See In re Peterson, supra.
Appellants argue that the claimed properties are not
“inherent” upon the combination of McCullough and Otani (Reply
Brief, pages 4-5). This argument is not persuasive since the
examiner has applied references which establish the prima facie
obviousness of the limitations in claim 1 on appeal regarding fiber
diameter, fiber length, bulk density, and the use of anisotropic
pitch-based carbon fibers, as well as establishing that the prior
art method of preparation of the carbon fibers is the same as
4Since appellants have not challenged the examiner’s finding
regarding the “bulk density” taught by McCullough, we accept this
as a fact. See In re Kunzmann, 326 F.2d 424, 425 n.3, 140 USPQ
235, 236 n.3 (CCPA 1964). We note that the bulk densities taught
by McCullough in Example 1 relate to the “batting,” not the
carbon fibers in a thermosetting resin matrix (see col. 2, ll. 3-
6; and col. 5, ll. 53-62).
7
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