Appeal No. 96-3533
Application 08/203,624
view of the teaching in the reference that the amount of fiber employed depends on the
desired properties, the absence of a lower limit for the fiber in Gamble would have
reasonably suggested to one of ordinary skill in the art that the fibers can be used in an
amount which encompasses the claimed ranges. Under these circumstances, the burden is
on appellants to demonstrate the criticality of the claimed ranges. In re Geisler, 116 F.3d
1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575,
1577-78, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456,
105 USPQ 233, 235 (CCPA 1955).
We must agree with appellants that we incorrectly attributed to the examiner our finding that the
teachings of Gamble “overlaps” with the methods of claim 18. In addition to this characterization of the
teachings of Gamble vis-à-vis the methods of claim 18, we also expressed the opinion that “in view of
the teaching in the reference that the amount of fiber employed depends on the desired properties, the
absence of a lower limit for the fiber in Gamble would have reasonably suggested to one of ordinary
skill in the art that the fibers can be used in an amount which encompasses the claimed ranges.” While
our findings present a more comprehensive review of the teachings of Gamble vis-à-vis the methods of
claim 18 than that presented by the examiner in stating that Gamble teaches that the fibers can be
present in an amount of 1 wt %, we consider our finding that the teachings of “Gamble would have
reasonably suggested to one of ordinary skill in the art that the fibers can be used in an amount which
encompasses the claimed ranges” to be essentially the same as the examiner’s findings that one of
ordinary skill in the art would “have determined the optimum amount of fibers to be added to the resin
through routine experimentation” and that “the actual difference between [1 wt % and less than 0.2 wt
%] is 0.8 wt % and this small difference is considered to be an obvious modification of [Gamble].” We
agreed with the examiner that the finding of prima facie obviousness of the amount of “fibers
comprising less than 0.2% by weight of the coating” in claim 18 over the teachings of Gamble, which
does not disclose that amount per se, was such as to shift the burden to appellants to demonstrate the
criticality of the amount of fibers specified in that claim.
On this record, it is apparent that our affirmance of the examiner’s ground of rejection with
respect to claim 18 was not based solely on the finding of an “overlap” between the amount of fibers
according to the teachings of Gamble and the amount specified in claim 18. Indeed, we know of no
authority which holds that a prima facie case of obviousness is established only when there is an
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