Appeal 2007-0318
Application 09/766,362
results” compared to Steiner’s disclosed range but rather provides some
evidence that using a drug in dry powder form rather than in liquid form
avoids a bitter taste and after taste. (FFs 14-19.)
21. There is no other teaching in the Specification to support a
finding that the presently claimed invention provides unexpected results
compared to the prior art formulations of Steiner.
22. Appellants have not provided any evidence of unexpected results,
such as through a declaration or reference to other prior art teachings.
DISCUSSION OF STEINER REJECTION
Claims 1 and 14
The patentability of claims 1 and 14 turns on the particle size
limitation. The other claim limitations are either taught or would have been
clearly suggested by the teachings of Steiner, in view of what would have
been generally known in the art at the time the invention was made. (See
FFs 1-10.)
Claiming an “average particle size” rather than a particle size range
complicates a comparison between the claimed invention and Steiner. (FFs
2, 5, 11, 14-18.) Giving Appellants the benefit of the doubt, however, there
is at least an overlap between Steiner’s 10 microns and the claimed 10
microns. (See FFs 4, 5.)
Overlapping ranges support a prima facie case of obviousness. E.g.,
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
(Fed. Cir. 1990). Further, the “normal desire of scientists or artisans to
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