Appeal No. 1999-2703
Application No. 08/772,068
claimed invention one must select a range which differs from
that explicitly disclosed by the reference. Such selection
suggests a prima facie case of obviousness rather than an
anticipation. Further, a prima facie case of obviousness can be
rebutted by objective evidence demonstrating that the narrowly
claimed invention exhibits unexpected properties which differ
from the disclosed invention.1
Background
The rejection in the present case was made solely under
35 U.S.C. § 102 for claims 1, 3, 5, and 7. The majority affirms
the rejection of claims 1 and 3 based on an endpoint of the
disclosed range falling within the claimed range. In my
opinion, this outcome is incorrect. I agree with the reasoning
expressed by the dissent of Ex parte Lee, 31 USPQ2d 1105, 1111
(Bd. Pat. App. & Int. 1993), that:
[I]n cases involving an overlap of a claimed invention
and applied prior art, anticipation under 35 U.S.C.
102 can arise even though an applied reference does
Although no alternative rejection has been set forth under 35 U.S.C.1
§ 103 for the claims presently rejected under 35 U.S.C. § 102, in my opinion
the evidence of record would not overcome an obviousness rejection of those
claims, as appellant has failed to show the required nexis between the results
and the length of the suspension spring. Instead the data appears to require
particular values for both the suspension spring length and also the slider
mass and load urging the slider, simultaneously, to obtain beneficial results.
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