Appeal No. 96-1795
Application No. 08/262,745
Eichenauer I or II and thus has not established a prima facie
case of obviousness (Brief, pages 9-11).
“[T]he examiner bears the initial burden, on review of
the prior art ..., of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). However, we disagree with
appellants’ argument since the examiner has provided reasoning
sufficient to establish a prima facie case of obviousness (see
the Answer, page 8). When the ranges of the prior art and3
the claims on appeal are so close, one of ordinary skill in
the art would have the expectation of similar properties in
the absence of any showing of unexpected results. In re
Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936 (Fed. Cir. 1990); Titanium Metals Corp. v. Banner,
778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). It is
3It should also be noted that molecular weight
determination is not exact, as shown by appellants’ examples
(see the specification, page 20, line 13, "ca. 51,000") and
the examples in Eichenauer I or II (e.g., see Eichenauer I,
column 6, lines 16, 25, 30, and 35, "approx.").
8
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