1 establish that the claimed separation membranes achieve a result not
2 achieved by those described by Mahendran.
3 We find it unnecessary to describe Brun.
4 Other findings as necessary appear in the “Discussion” section of this
5 opinion.
6 D. Principles of law
7 An anticipation requires a prior art reference to describe every
8 limitation in a claim—either explicitly or inherently. See, e.g., In re
9 Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
10 A prior art range which overlaps, but is not wholly included within, a
11 claimed range generally does not anticipate the claimed range. See, e.g.,
12 Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 78 USPQ2d 1417
13 (Fed. Cir. 2006) ((1) prior art temperature range of 100ºC to 500ºC does not
14 anticipate claimed range of 330ºC to 450°C (441 F.3d at 999, 78 USPQ2d at
15 1423) and (2) prior art range of 0.001 to 1% oxygen to methylene chloride
16 molar ratio does not anticipate range of 0.1% to 5.0% oxygen to methylene
17 chloride molar ratio (441 F.3d at 1000, 78 USPQ2d at 1424)).
18 A prima facie case of obviousness generally arises where the ranges
19 described in the prior art overlap claimed ranges. See, e.g., In re Harris, 409
20 F.3d 1339, 1341, 74 USPQ2d 1951, 1953 (Fed. Cir. 2005).
21 Where the difference between the claimed invention and the prior art
22 is some range or other variable within the claims, generally the applicant
23 must show that particular claimed range is critical (i.e., patentably distinct),
24 by showing that the claimed range achieves an unexpected result relative to
25 the prior art range. See, e.g., In re Woodruff, 919 F.2d 1575, 1578, 16
26 USPQ2d 1934, 1936-37 (Fed. Cir. 1990).
7
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