Appeal No. 96-3533
Application 08/203,624
in their reply brief that “Gamble prefers 2 to 20%” and thus “teaches away from the claimed invention
since the unpreferred 1% lower limit of Gamble’s fibers is still 500% greater than the upper limit recited
in claim 18” (page 10). The examiner points out in the supplemental answer that “the actual difference
between the two values is 0.8 wt % and this small difference is considered to be an obvious
modification of [Gamble] in the absence of a showing of criticality” (page 4). In their supplemental reply
brief, under the heading “Absence of overlapping subject matter negates Examiner’s requirement for
‘showing of criticality’” (page 1), appellants argue that “[t]he Examiner has provided absolutely no
reasoning to support the assertion that it would have been obvious to lower the lower limit of the fiber
content in the composite of Gamble to within the range set forth in Claim 18” and thus “has failed to
establish a prima facie case of obviousness with respect to” this claim (page 5).
In considering claim 18, we stated in our original opinion (pages 14-15; italic emphasis in
original; underline emphasis supplied):
As we set forth above (see supra p. 11), Gamble would have taught one of ordinary skill in
this art that the selection of these materials is based on the desired EMI characteristics of the
shield to be prepared. We are not persuaded otherwise by the limitations with respect to the
amount of fiber which is specified in unrelated dependent claims 7[1] and 18. In this respect,
we fail to find any teaching in Gamble which would place a lower limit on the amount of
fibers, conductive (claims 7 and 18) and non-conductive (claim 18), that can be dispersed in
the resin matrix. Indeed, Gamble discloses that the conductive fiber, such as those specified
in claim 7 (col. 4, line 30, and col. 4, line 30, to col. 5, line 5), “advantageously comprises . .
. about 1 . . . percent by weight of the EMI shield” (col. 5, lines 9-11; emphasis supplied),
which disclosure in view of the term “about” would have been considered one of by ordinary
skill in this art to reasonably encompass fiber “in an amount less than 1 wt % of the coating”
as specified in claim 7. We are further of the opinion that this disclosure of Gamble along
with the further teaching that any amount of non-conductive fiber could be used (col. 6, lines
46-54), would also have suggested to one of ordinary skill in this art that an even smaller
amount of fibers may be present, including a content of “less than 0.2% by weight of the
coating” as specified in claim 18. Thus, we agree with the examiner that the range of the
percent by weight of fiber, conductive and non-conductive, which can be contained in the
compositions of the claims, overlaps with the range of such fibers in Gamble. Indeed, in
1 We observe that claim 7, which was not include in the request, modifies “[t]he method of claim 1,
wherein . . . the fibers comprising metal-coated dielectric or semiconductive fibers in an amount of less
than 1 wt % of the coating” and thus would encompass methods that utilize at least part of the types of
fibers and the amount thereof as specified for methods encompassed by claim 18.
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