Appeal No. 1999-2703
Application No. 08/772,068
682, 133 USPQ at 280). However, I cannot agree with the
majority that a disclosure of a range in Hamaguchi, with no
specific examples or embodiments, constitutes a disclosure of
one or more discrete points or values and, therefore,
anticipates a range different from that disclosed.
The majority's opinion in the present case is inconsistent
with the established policy that objective evidence may be
introduced to overcome rejections based on overlapping ranges.
See, e.g., In re Wertheim, 541 F.2d at 267, 191 USPQ at 100,
wherein the court stated:
We appreciate the arguments made in In re Malagari,
499 F.2d 1297, 182 USPQ 549 (CCPA 1974), and the
discussion in In re Orfeo, 58 CCPA 1123, 440 F.2d 439,
169 USPQ 487 (1971), to the effect that ranges which
overlap or lie inside ranges disclosed by the prior
art may be patentable if the applicant can show
criticality in the claimed range by evidence of
unexpected results. [Emphasis added.]
Even though the presently claimed range overlaps the ranges
disclosed by the prior art, the majority opinion, by affirming
the rejection of claims 1 and 3 under 35 U.S.C. § 102, leaves no
room for a showing of criticality for those claims. In fact, my
colleagues explicitly preclude such a showing for the claims
rejected under 35 U.S.C. § 102 (on pages 4-5) by stating that
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