Appeal 2007-3962
Application 10/005,846
2003) (determining where in a disclosed set of percentage ranges the
optimum combination of percentages lies is prima facie obvious).
While Kondo does not disclose the exact effect one of ordinary skill in
the art would expect to obtain from adding EPR to the polyethylene, it is
evidenced from the context of the disclosure within the reference that the
effect was known to those of ordinary skill in the art. In fact, Appellants’
own Specification indicates that elastomers were known to improve the
mechanical strength of polyethylene films (Specification 3:1-8). “The
combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results.” KSR, 127
S. Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007). The question to be asked
is “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” KSR, 127 S. Ct. at 1740,
82 USPQ2d at 1396.
In this case, the disclosure of the broader range in Kondo shifted the
burden to Appellants to show that the invention would not have been
obvious such as by showing “the improvement was more than the
predictable use of prior art elements according to their established functions,
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396, i.e., by showing results
unexpected by those of ordinary skill in the art for the narrower claimed
range. Peterson, 315 F.3d at 1330, 65 USPQ2d at 1383. Appellants do not
present any evidence of secondary indicia of non-obviousness such as
unexpected results.
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