Appeal No. 1999-2092 Page 16
Application No. 08/798,718
276, 205 USPQ 215, 219 (CCPA 1980) and In re Aller, 220 F.2d
454, 456, 105 USPQ 233, 235 (CCPA 1955). As stated in In re
Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1688 (Fed. Cir.
1996):
[t]his court and its predecessors have long held,
however, that even though applicant's modification
results in great improvement and utility over the
prior art, it may still not be patentable if the
modification was within the capabilities of one
skilled in the art, unless the claimed ranges
"produce a new and unexpected result which is
different in kind and not merely in degree from the
results of the prior art."
Additionally, as stated in In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990):
[t]he 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 [citations
omitted].
In the present case, however, the appellant has not even
alleged, must less established, that the claimed ratio (i.e.,
the length of the line of weakness to the length of one side
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007