Appeal No. 1998-2817
Application No. 08/455,366
disclosed in the prior art, it is not inventive to discover
the optimum or workable ranges by routine experimentation. In
re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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).... [Emphasis in original; citations omitted.]
Here, however, the appellants have made no persuasive showing
that the provision of “a maximum magnitude of decay of less
than about 76.98 grams in an extension range of about 300
millimeters over the first three cycles” is in any way
critical or is anything which would be unexpected.
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