Appeal 2006-0990
Application 10/209,369
Warzelhan, are merely guidelines with regard to workable concentrations for
the various classes of components. One of ordinary skill in the art must
select a species within the disclosed class and then perform experimentation,
albeit routine in nature, to determine the specific amounts to use of the
specific species chosen. The end points do not, in this case, reflect a “data
point” for something embodying each and every component of the claimed
polymer. Put another way, the end points are neither representative of a
discrete embodiment nor of specific significance apart from the other values
within the range. As stated in Atofina, “the disclosure of a range is no more
a disclosure of the end points of the range than it is of each of the
intermediate points.” Atofina, 441 F.3d at 1000, 78 USPQ2d at 1424. That
holds true in the present case and to the extent that Ex parte Lee conflicts
with Atofina, Atofina, being a case decided by our reviewing court, controls.
For the above reasons, we cannot sustain the Examiner’s anticipation
rejection.
In response to our concurring colleague, we merely note that we have
based our decision on the arguments made in the Brief and Reply Brief. We
find that those arguments provide an adequate basis upon which to reverse
the decision of the Examiner. We do not consider arguments not made in
the Brief. 37 C.F.R. § 40.37(c)(1)(vii). Since neither the Examiner nor
Appellant argues that mol% of the reactant differs from mol% of the
component residue, for purposes of this appeal we consider these amounts
the same/identical.
Appellant states that the Examiner may have established a prima facie
case of obviousness of claim 1 over the Warzelhan references (Br. 6).
Appellant, however, submits that there are sufficient facts in the record to
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