Ex parte TSUBUKO et al. - Page 6




          Appeal No. 94-2441                                                          
          Application 07/821,314                                                      


          than a resin having a melt index of 100 at 190EC.  See footnote             
          4.  We therefore conclude that the examiner has correctly                   
          determined that the claimed ranges of acid value and melt                   
          viscosity fall within or substantially overlap the respective               
          ranges described for El-Sayed’s toner resin component.  We                  
          therefore agree with the examiner that a strong prima facie case            
          of obviousness has been established for the claimed subject                 
          matter.  See In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549,             
          553 (CCPA 1974) and In re Orfeo, 440 F.2d 439, 440, 169 USPQ 487,           
          488 (CCPA 1971).  Indeed, appellants state at page 2 of their               
          Reply Brief filed March 3, 1994 that                                        
               ...at best the El-Sayed et al reference presents a                     
               rebuttable showing of prima facie obviousness of the                   
               presently claimed invention.                                           
               When an applicant seeks to overcome a prima facie case of              
          obviousness by showing improved performance in a range that is              
          within or overlaps with the range disclosed in the prior art, the           
          applicant must “show that the [claimed] range is critical,                  
          generally by showing that the claimed range achieves unexpected             
          results relative to the prior art range.”  In re Woodruff, 919              
          F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).  Here,              
          appellants submit that the evidence of record allegedly showing             
          the criticality of the claim parameters is more than sufficient             

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