Appeal No. 1997-1943
Application 08/254,335
(CCPA 1972) (“Where, as here, the prior art disclosure suggests the outer limits of the range of suitable
values, and that the optimum resides within that range, and where there are indications elsewhere that in
fact the optimum should be sought within that range, the determination of optimum values outside that
range may not be obvious.”).
Here, we are of the view that Bauer would have led one of ordinary skill in this art away from
optimizing the average molecular weight of polycaprolactones beyond the disclosed range by clearly
teaching that “for a particular photopolymerizable composition[,] polycaprolactone of average molecular
weight of 15,000 is more effective than polycaprolactone of average molecular weight of 40,000” (col.
3, lines 3-6). While the examiner alleges that an average molecular weight of 50,000 “is sufficiently
close to about 40,000 that one of ordinary skill in this art would have a reasonable expectation of
success in substituting polycaprolactone with a molecular weight of at least 50,000,” we find no
scientific explanation and/or evidence in the record establishing that this person would have reasonably
expected polycaprolactones thus differing by 10,000 average molecular weight to have the same or
closely similar properties. Cf. Titanium Metals Corp. v. Banner, 778 F.2d 775,782-83, 227 USPQ
773, 779 (Fed. Cir. 1985) (“[T]he Russian article discloses two alloys having compositions very close
to that of claim 3, which is 0.3% Mo and 0.8% Ni, balance titanium. The two alloys in the prior art have
0.25% Mo - 0.75% Ni and 0.31% Mo - 0.94% Ni, respectively. The proportions are so close that
prima facie one skilled in the art would have expected them to have the same properties.”).
Furthermore, we find that the examiner has not cited any disclosure in Bauer which establishes
that the term “about” used in disclosing the subject range therein would indeed extend that range to
include an average molecular weight of 50,000. Cf. Pall Corp. v. Micron Separations Inc., 66 F.3d
1211, 1217-18, 36 USPQ2d 1225, 1229 (Fed. Cir. 1995); Eiselstein v. Frank, 52 F.3d 1035,
1038-40, 34 USPQ2d 1467, 1470-71 (Fed. Cir. 1995).
Thus, on this record, we find that, at best, the examiner has made out a case that it would have
been obvious to try a polycaprolactone having a higher average molecular weight than that disclosed by
3 This is a new ground of rejection (answer, page 2). Appellants filed a reply brief on February 18,
1997 (Paper No. 27) to which the examiner did not respond further in the supplemental answer (Paper
No. 28).
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