Appeal No. 1997-2356
Application 08/109,798
pH range of 4.5 to 6.0 and argue that this result is unexpected and highly material to the
production of stable NGF. Brief, page 4. Appellants’ position is that, absent factual
evidence to the contrary, the examiner is not entitled to discount the Lidgate Declaration
arguments and evidence.
In our view, the examiner has not provided factual evidence and argument to the
contrary, indicating that NGF shows unexpected stability in the claimed pH range of 4.5 to
6.0. The examiner’s main argument appears to be that the Declaration does not provide
an adequate presentation of data. On this basis, the examiner finds that the conclusions
set forth in the Lidgate Declaration regarding the stability of NGF in the claimed pH range
cannot be considered unexpected in view of the teachings of Pignatti of biologically active
NGF within the claimed pH range. Answer, page 11.
To the contrary, we find that the Lidgate Declaration data has probative value and
provides adequate evidence of unexpected stability of NGF in the pH range of 4.5 to 6.0
which is sufficient to rebut the examiner’s prima facie case of obviousness. “[A] prima
facie case of obviousness based on overlapping ranges can be rebutted if the applicant
(1) can establish ‘the existence of unexpected properties in the range claimed’ or (2) can
show ‘that the art in any material respect taught away’ from the claimed invention.” In re
Geisler, 116 F.3d 1465, 1468, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (quoting In re
Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974)). Moreover, neither
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