Appeal No. 96-2808
Application 08/102,708
upon characteristics of appellant*s claimed product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ
594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977);
In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324, 326 (CCPA 1974). The reason for this is that the
U.S. Patent and Trademark Office is not able to manufacture and compare products. See In re Best, 562
F.2d at 1255, 195 USPQ at 434; In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
The product disclosed by Bruderreck is a composition comprising a mixed alkyl-t-butyl ethers and
gasoline. Bruderreck’s ethers have an isobutylene component and each ether in the mixture has an alkyl
component having one, three or four carbon atoms (Bruderreck: col. 4, lines 26-30). This composition
appears to be substantially the same composition as recited in appellants’ claim 31 which sets forth a
composition comprising gasoline and a mixture of C -C alkyl- t-butyl ethers. In addition, Bruderreck
1 8
discloses that the amount of the mixed ethers blended with the gasoline is preferably 10-30% by volume.
This amount encompasses appellants’ claimed 15% by volume as set forth in claim 39 (Bruderreck: col.
2, lines 10-13). It is well settled that a prior art range which encompasses a claimed range renders the
claimed range prima facie obvious. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). We
conclude that Bruderreck alone establishes a prima facie case of obviousness with regard to the rejection
of claims 31 and 39 under 35 U.S.C. § 103.
Having thus established a prima facie case of obviousness, we must look to any objective evidence
of unobviousness presented by appellants. In Table 5 on page 26 of appellants’ specification, a 15% by
-8-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007