Appeal No. 1999-1136
Application No. 08/771,373
density overlap the ranges of those parameters disclosed by
Basche, supra, claims 1 and 2 are prima facie obvious. See In
re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997), and cases cited therein; see also In re Reven, 390
F.2d 997, 1001, 156 USPQ 679, 681 (CCPA 1968)("absent a
showing to the contrary, discovering particular ranges within
a range disclosed by the prior art would be within the skill
of the art").
Appellants have the burden of rebutting the prima facie
case of obviousness. As stated in In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990):
The law is replete with cases in which the
difference between the claimed invention and the
prior art is some range or other variable within the
claims. See, e.g., Gardner v. TEC Sys., Inc., 725
F.2d 1338, 220 USPQ 777 (Fed. Cir.), cert. denied,
469 U.S. 830 [225 USPQ 232] (1984); In re Boesch,
617 F.2d 272, 205 USPQ 215 (CCPA 1980); In re
Ornitz, 351 F.2d 1013, 147 USPQ 283 (CCPA 1965); In
re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
These 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. Gardner, 725 F.2d
at 1349, 220 USPQ at 786 (obviousness determination
affirmed because dimensional limitations in claims
did not specify a device which performed and
operated differently from the prior art); Boesch,
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