Appeal No. 1998-2916
Application No. 08/606,975
is apparent to us that Sandhu’s disclosed flow ratio range of
0.1 to 0.5 overlaps the claimed flow ratio range of “equal to
or greater than 0.4.” Further, in factual situations where
claimed ranges overlap or lie inside ranges disclosed by the
prior art, a prima facie case of obviousness has been held to
exist. In re Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100
(CCPA 1976); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d
1362, 1365-66 (Fed. Cir. 1997).
This prima facie case serves to shift the burden to
Appellant to come forward with evidence which establishes the
criticality of the claimed range, generally by a showing that
the claimed range achieves unexpected results relative to the
prior art range, or that the prior art, in any material way,
teaches away from the claimed range. In re Malagari, 499 F.2d
1297, 1301, 182 USPQ 549, 553 (CCPA 1974); In re Woodruff, 919
F.2d 1575, 1577, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); Ex
parte Lee, 31 USPQ2d 1105, 1107 (Bd. Of Pat. App. & Inter.
1993).
In attempting to address this burden, Appellant refers
12
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007