Appeal No. 2007-1227 Page 6
Application No. 10/416,211
forth in In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir.
1990), alteration original,
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable
within the claims. See, e.g., Gardner v. TEC Sys., Inc., 725 F.2d
1338, 220 USPQ 777 (Fed. Cir.), cert. Denied, 469 U.S. 830 [225
USPQ 232] (1984); In re Boesch, 617 F.2d 272, 205 USPQ 215
(CCPA 1980); In re Ornitz, 351 F.2d 1013, 147 USPQ 283 (CCPA
1965); In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range.
On this record, we find no comparison of appellants’ claimed invention to
Winters, the closest prior art.
Accordingly, we affirm the rejection of claim 1 under 35 U.S.C. § 103 as
being unpatentable over Winters. Claim 3 falls together with claim 1.
AFFIRMED
)
Donald E. Adams )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Nancy J. Linck ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
Richard M. Lebovitz )
Administrative Patent Judge )
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