Appeal No. 1999-2703
Application No. 08/772,068
unexpected results are relevant only to an obviousness rejection
and, therefore, cannot be used to overcome the anticipation
rejection.
In In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936-7 (Fed. Cir. 1990) the court explains:
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 . . . Boesch, 617 F.2d at 276,
205 USPQ at 219; Ornitz, 351 F.2d at 1016-17, 147 USPQ
at 286; Aller, 220 F.2d at 456, 105 USPQ at 235.
The court in Woodruff states that appellant must show
criticality. Thus, appellant must have the opportunity to do
so. Accordingly, the majority's basis for affirming the
anticipation rejection of claims 1 and 3 directly contradicts
both Wertheim and Woodruff, id. Further, the court reaffirms2
2 See also, In re Russell, 439 F.2d 1228, 1231, 169 USPQ 426, 428 (CCPA
1971) wherein the court held "if appellant can establish that his relatively
narrow ranges yield unexpectedly superior results as against the broad Wei
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