Appeal No. 1998-0036 Page 7
Application No. 08/431,203
that “it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re
Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997)(quoting In re Aller, 220
F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). Where the difference between the claimed
invention and the prior art is some range or other variable within the claims, the applicants must show
that the particular range is critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990). We conclude that the Examiner has established a prima facie case of obviousness
with respect to the claimed process.
Appellants argue that none of the references teach reducing the moisture content to about 1%
to about 2% by weight. As discussed above, such an express teaching need not be contained in the
references to establish a prima case of obviousness. Where the modification in process parameters is
within the capabilities of one of ordinary skill in the art, the modification will not make the process
patentable unless the claimed range produces “a new and unexpected result.” Aller, 220 F.2d at 456,
105 USPQ at 235; Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936-37.
Appellants argue that Swisher does not teach separately outgassing the polymeric film, as
recited in independent claim 1. We note that claim 1 does not require a separation in time or space
between the step of outgassing the vacuum system and the step of bombarding the organic material with
plasma. Nothing in claim 1 excludes vacuum system evacuation and plasma treatment from occurring at
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