Appeal No. 98-2118
Application No. 08/459,986
In view of the foregoing, we will sustain the rejection
of claims 1-3, 6, 8 and 9 under 35 U.S.C. § 102(b).
Turning now to the rejection of claims 4 and 5 under 35
U.S.C. § 103 as being unpatentable over Elvekjaer, the
appellants argue that Elvekjaer does not show a "ratio of the
first value to the second value [which] is between 0.7 and
0.9" as set forth in representative claim 5. However, as the
court stated in In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936-37 (Fed. Cir. 1990):
[n]or can patentability be found in the difference
in . . . ranges recited in the claims. The law is
replete with cases in which the difference between
the claimed invention and the prior art is some
range or other variable within the claims . . . .
These cases have consistently held that in such a
situation, the applicant must show that the
particular range is critical, generally by showing
that the claimed range achieves unexpected results
relative to the prior art range . . . (obviousness
determination affirmed because dimensional
limitations in claims did not specify a device which
performed and operated differently from the prior
art) . . . . [Citations omitted.]
Here, however, the appellants have made no persuasive
showing that the provision of “between 0.7 and 0.9” is in any
way critical or is anything which would be unexpected. To the
contrary, the specification on page 9 merely states that
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