Appeal No. 96-3533
Application 08/203,624
“overlap” in the claimed and prior art ranges of a particular process parameter or ingredient. Rather, a
prima facie case of obviousness is dependent on whether one of ordinary skill in the art would have
reasonably expected that the proportion or range of the claimed invention encompassed by the
appealed claims would result in the same properties or achieve the same results as the proportion or
range of the applied prior art. See generally, Haynes Int’l, Inc. v. Jessop Steel Co., 8 F.3d 1573,
1577 n.3, 28 USPQ2d 1652, 1655 n.3 (Fed. Cir. 1993) (“The Board’s position was consonant with
this court’s precedent holding that when the difference between the claimed invention and the prior art is
the range or value of a particular variable, then a prima facie rejection is properly established when the
difference in range or value is minor. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F.2d 775,783, 227 USPQ
773, 779 (Fed. Cir. 1985).”).
Thus, upon reconsideration of our decision to affirm the examiner’s ground of rejection with
respect to claim 18 in light of appellants’ arguments advanced in their request, on this record, we find
that we cannot discern that we have changed the thrust of the examiner’s grounds of rejection, or, in
other words, the evidentiary scheme that we have described in our opinion with the amplified reasoning
set forth therein based on facts of record does not differ in substance from that set forth by the examiner
in the answer. Indeed, it is apparent that appellants had ample “fair opportunity” to react to the thrust or
evidentiary scheme of the rejection with respect to claim 18 based on the examiner’s finding that the
differences between the teachings of Gamble and the limitation of claim 18 was such as to require
appellants to establish the criticality of the claimed amount of fibers even in view of our opinion.
Kronig, supra; cf. Boon, supra; In re Waymouth, supra.
Accordingly, we decline to designate our affirmance of the examiner’s rejection of claim 18 as a
new ground of rejection under 37 CFR § 1.196(b) (1997).
Appellants’ second contention is that we must reverse the ground of rejection of record because
we gave “the claimed phrase ‘in a [sic, the] resin’ . . . an unreasonable interpretation by reading the
claimed phrase on an aqueous suspension of fibers and powder resin” in our opinion (request, pages 1
and 7-10). The subject phrase appears in the first and second specified steps of the claimed method
encompassed by claim 1 (emphasis supplied):
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