Appeal No. 2006-1273
Application No. 10/420,400
1, using a 5:1 ratio, yields a solid product, while their Example 2, using a 10:1 ratio,
yields a liquid (col. 4, line 53-col. 5, line 20). The record evidence establishes a prima
facie case for the proposition that making such a modification in a process would have
been obvious to one of ordinary skill in the art. See, e.g., In re Aller, 220 F.2d 454, 456,
105 USPQ 233, 235 (CCPA 1955) (claimed process held obvious when performed at
conditions outside the ranges disclosed in the prior art) (cited with approval in Merck &
Co. v. Biocraft Labs, 874 F.2d 804, 808, 10 USPQ2d 1843, 1847 (Fed. Cir. 1989)); see
also In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 217-19 (CCPA 1980) (claimed
alloys held unpatentable under § 103 even though Nv values of alloys outside those
disclosed in prior art).
In fact, the ratio ranges are roughly contiguous, further supporting the finding that
a skilled artisan would have been motivated to make the modification. In such cases, the
courts “have consistently held … 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.” In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1935
(Fed. Cir. 1990) (emphasis in original) (claims held unpatentable where recited range of
CO “roughly contiguous” with that in prior art). See also Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (claimed alloys held
unpatentable under § 103 because “proportions [while outside expressly disclosed ranges]
are so close that prima facie one skilled in the art would have expected them to have
same properties”).
Finally the desirability of producing a liquid product (the phenolate in phenol)
would have been obvious to one of ordinary skill in art in view of the prior art teachings
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