Appeal No. 1998-2000
Application 08/469,171
skill in this art would have disregarded this specific directive in Belder and selected a range of
isophthalic acid below that taught to be necessary by the reference. See In re Sebek, 465 F.2d 904,
907, 175 USPQ 93, 95 (CCPA 1972) (“Where, as here, the prior art disclosure suggests the outer
limits of the range of suitable values,
and that the optimum resides within that range, and where there are indications elsewhere that in fact the
optimum should be sought within that range, the determination of optimum values outside that range may
not be obvious.”); cf. In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)
(“The statement in Zehender that ‘[i]n general, the thickness of the protective layer should not be less
than about [100 Angstroms]’ falls far short of the kind of teaching that would discourage one of
ordinary skill in the art from fabricating a protective layer of 100 Angstroms or less.”).
Thus, we reverse this ground of rejection because it is manifest that the only direction to
appellants’ claimed invention as a whole on the record before us is supplied by appellants’ own
specification. See Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32.
The examiner’s decision is reversed.
Reversed
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
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