Appeal No. 1998-3355
Application No. 08/665,167
The examiner maintains that the burden is on appellants to show that the dimensions
are “critical.” (See answer at page 7.) We disagree with the examiner. Here, the
examiner has provided no evidence that the dimensions of Eaton are even remotely close
to those recited in claim 13.
The examiner relies on In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.
Cir. 1990), where there was a disclosed range in the prior art which differed from that in
the claims on appeal. There the Federal Circuit stated that the cases have “consistently
held that in such a situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results relative to the
prior art range.” Woodruff at 1578, 1936. But, in the instant factual situation, the prior art
is silent as to any range. No specific range of values for the height of the convex shape is
disclosed. Therefore, we distinguish the factual situation in Woodruff and the line of
cases therein where the prior art has set forth some objective basis for being near the
range as claimed. Here, the examiner has not met his initial burden in establishing a
prima facie case of obviousness which would shift the burden to appellants to present
evidence of the critical nature of the range. Therefore, we will not sustain the rejection of
claim 13 and its dependent claims
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