Appeal No. 2006-1352
Application 10/250,683
compare prior art products. [Footnote and citation omitted.]”); In re Skoner, 517 F.2d 947,
950-51, 186 USPQ 80, 82-83 (CCPA 1975) (“Appellants have chosen to describe their invention
in terms of certain physical characteristics . . . . Merely choosing to describe their invention in
this manner does not render patentable their method which is clearly obvious in view of [the
reference]. [Citation omitted.]”); cf. In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655,
1657-58 (Fed. Cir. 1990) (“The Board held that the compositions claimed by Spada ‘appear to be
identical’ to those described by Smith. While Spada criticizes the usage of the word ‘appear’, we
think that it was reasonable for the PTO to infer that the polymerization by both Smith and
Spada of identical monomers, employing the same or similar polymerization techniques, would
produce polymers having the identical composition.”).
Furthermore, appellants also have the burden of establishing the criticality of the claimed
ranges specified in each of claims 1 and 10 over the ranges taught in the prior art such as by a
showing of unexpected results. See In re Woodruff, 919 F.2d 1575, 1577-78, 16 USPQ2d 1934,
1936-37 (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.]”); Boesch, 617 F.2d at 276,
205 USPQ 215, 219; Aller, 220 F.2d at 456, 105 USPQ at 235.
Appellants have not relied on any evidence in the brief or reply brief which addresses
either burden. Appellants make the bare allegations that the Mine Examples do not use resins
which result in the properties specified in the first clause of claims 1 and 10 (brief, e.g., page 6;
reply brief, e.g., page 6-7). Such unsupported allegations are entitled to little, if any, weight.
See In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979); In re Lindner, 457 F.2d
506, 508, 173 USPQ 356, 358 (CCPA 1972). In any event, we found above that the Mine
Practical Examples make clear that the silicone resins used therein result in a “rubber-form” heat
conducive sheet, and indeed, appellants have not shown that the specific resins are outside of the
scope of the appealed claims.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Mine and Hayase and
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