Appeal 2007-1679
Application 11/041,470
Appellants contend that the Examiner's conclusion of obviousness "is
incorrect because it is undisputed that Fujioka fails to disclose Appellant's
claimed 8% to 16% range" (Principal Br. 8, penultimate para.). However, it
is by now axiomatic that a reference need not specifically disclose the
claimed range, per se, to establish the obviousness of the claimed range. A
prior art range which totally encompasses or overlaps the claimed range is
sufficient to establish a prima facie case of obviousness within the meaning
of § 103.
Appellants rely upon Specification examples and four Declarations
provided by an employee of the assignee of the present application as
evidence of unexpected results with respect to the claimed range of 8-16%
by weight for the hydrolysate of Formula (I). However, we concur with the
Examiner's reasoning that Appellants' evidence is not commensurate in
scope with the degree of protection sought by the appealed claims,1 and does
present a comparison with the closest prior art.2
Appellants cite Examples 1-4 of their Specification which comprise a
hydrolysate of the dialkyldialkoxysilane (DMDES) in amounts of 5%, 10%,
13%, and 20%, respectively. Hence, the examples comprising 10 and 13%
of DMDES are within the claimed range and the examples comprising 5%
and 20% of DMDES are outside the claimed range. Appellants stress that
the compositions within the claimed range exhibit superior rupture energies,
and, therefore, establish the criticality of the claimed ranged. Appellants
1 In re Grasselli, 713 F.2ds 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983);
In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980).
2 In re Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260, 1263-64 (Fed. Cir.
1984).
4
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