Appeal No. 1998-3202
Application No. 08/456,294
showing of unexpected results, the instantly claimed invention is rendered prima
facie obvious.
We agree with the examiner that the teachings of Kishida reasonably suggest a range of
carbon fibers which overlaps the range claimed. See In re Lamberti, 545 F.2d 747, 750, 192
USPQ 278, 280 (CCPA 1976) (a reference must be considered for all that it expressly teaches
and fairly suggests to one of ordinary skill in the art). It is well-settled that where the difference
between the claimed invention and the prior art is a range, the applicant must show that the
particular range is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed.
Cir. 1990); see also In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974)
(claimed invention is rendered prima facie obvious by the teachings of a prior art reference that
discloses a range that touches the range recited in the claim). Appellant has made no such
showing in this case. Although appellant argues that the claimed range is critical, arguments in
the brief do not take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145
USPQ 716, 718 (CCPA 1965).
Finally, appellant argues that the claimed range would not have been obvious to one of
ordinary skill in the art since the objectives of the invention disclosed in Kishida and the claimed
invention are different. To the extent that the "objectives" are different, the motivation in the
prior art need not be identical to that of appellant in order to establish obviousness under 35
U.S.C. § 103. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 131 (Fed. Cir. 1996). That
is, it is of no moment, in the rejection based on 35 U.S.C. § 103, that one of ordinary skill in the
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