Appeal 2006-0990
Application 10/209,369
within or overlapping the claimed concentrations a prima facie case of
obviousness is established. See In re Harris, 409 F.3d 1339, 1343,
74 USPQ2d 1951, 1953 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325,
1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003); In re Geisler, 116 F.3d
1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990);
In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
The bottom line is that there is no per se rule for determining
patentability under either 35 U.S.C. § 102 or § 103. In every case, one must
determine whether something within the claimed invention is either
“described” in a way that is sufficiently specific to render it anticipated or
whether the differences are such that the claimed subject matter as a whole
would have been obvious to one of ordinary skill in the art. The fact that the
prior art discloses ranges overlapping, broader, or even within the claimed
ranges is not dispositive of either anticipation or obviousness, but it is
simply a factor to be considered. To establish anticipation, the Examiner
must do more than point to such ranges. See Atofina v. Great Lakes Chem.
Corp., 441 F.3d 991, 1000, 78 USPQ2d 1417, 1424 (Fed. Cir. 2006)(broader
prior art temperature range of 100-500°C did not describe the narrower
claimed range of 330-450°C “with sufficient specificity to anticipate” nor
did the overlapping prior art oxygen to methylene chloride molar ratio of
0.001-1.0% describe “with sufficient specificity” the claimed 0.1-5.0 % a
molar ratio).
As a second matter, we cannot agree with the Examiner that the end
points disclosed by Warzelhan constitute a “valid data point” discrete
enough to establish anticipation (Answer 6-7). The ranges, in the context of
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