Appeal No. 95-4321
Application 07/976,241
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984), In re Rinehart,
531 F.2d 1048, 1052, 189 USPQ 143, 147, (CCPA 1976).
Appellants initially argue that the combination of the references, relied upon by the
examiner are a result of hindsight reconstruction. (Principal Brief, page 7). However, as
we have noted, there is no need to combine any of the other cited references with Barker,
since Barker, standing alone, is sufficient to establish the prima facie case of
unpatentability as to the enzymatic isomerization process of claim 11. Appellants also
urge (principal brief, page 9) that Barker is deficient because: "No description of the
conditions for such conversion are suggested." We do not agree. As discussed, supra,
Barker teaches reaction conditions which are sufficient to practice the claimed process.
To the extent that appellants urge that they have discovered "[t]hat L-arabinose isomerase
can be used effectively under the conditions claimed to produce D-tagatose from D-
galactose, therefore, was unexpected and unobvious" (Principal Brief, paragraph bridging
pages 9-10), we note that appellants have presented no evidence in support of the alleged
unexpected results. It is well settled that a prima facie case of obviousness may be
rebutted "where the results of optimizing a variable, which was known to be result effective,
[are] unexpectedly good." In re Boesch, supra; In re Antonie, 559 F.2d 618, 620, 195
USPQ 6, 8-9 (CCPA 1977). However, where the difference between the claimed
invention and the prior art is some range or other variable within the claim, the appellants
must show that the particular range is critical, generally by showing that the claimed range
9
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