Appeal No. 2006-2731
Application No. 10/102,077
The Examiner responds “a particle size of 0.3 microns (below the claimed range)
shows an improved deposition” compared to those in the claimed range. Answer 7.
Appellants’ data support the Examiner’s position with respect to improved
deposition. See Specification at 36, ll. 9-13 (showing higher deposition efficiency at
sizes below Appellants’ claimed range). However, Appellants’ argument focuses on
stability, not improved deposition. And their data show that compositions made with
smaller sized particles (below their claimed 0.8 micron) are less stable than those within
the claimed range (as measured by change in viscosity). See id. The Examiner’s findings
with respect to deposition miss the point. See, e.g., In re Chupp, 816 F.2d 643, 646, 2
USPQ2d 1437, 1439 (Fed. Cir. 1987) (“Evidence that a compound is unexpectedly
superior in one of a spectrum of common properties . . . can be enough to rebut a prima
facie case of obviousness.”).
Appellants’ showing may be sufficient to establish that particles smaller than 0.3
microns yield a less stable shampoo. However, such a showing with respect to one end
of a claimed range does not overcome a prima facie case of obviousness with respect to
the entire range. “Claims which are broad enough to read on obvious subject matter are
unpatentable even though they also read on nonobvious subject matter.” In re Lintner,
458 F.2d 1013, 1015, 173 USPQ 560, 562 (CCPA 1972). See also In re Muchmore, 433
F.2d 824, 826, 167 USPQ 681, 683 (CCPA 1970) (claim held “too broad in the sense of
section 103, since it reads on both obvious and unobvious subject matter").
The combination of Coffindaffer with Thiel yields Appellants’ claimed invention
with particle sizes of “about 1 micron” and “about 2 microns.” See, e.g., Coffindaffer at
13, l. 13. Appellants’ data do not rebut the Examiner’s prima facie case with respect to
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