Appeal No. 1999-2703
Application No. 08/772,068
that a prima facie case of obviousness in a situation of
overlapping ranges can be rebutted by a showing that the claimed
range has unexpected properties over the disclosed range in In
re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997) and In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684,
1687 (Fed. Cir. 1995), thereby implying that such situations
call for rejections under 35 U.S.C. § 103 rather than under 35
U.S.C. § 102.
Lastly, a range is analogous to a genus, with each point or
smaller range within the range being equivalent to a species.
It is well established that a genus may render a species obvious
but does not anticipate the species. See, e.g., In re Petering,
301 F.2d at 681-83, 133 USPQ at 279-81, wherein the species was
held not to be anticipated by the genus where the genus included
a large number of species, and unexpected results were
considered in determining the obviousness of the species over
ranges as a whole, appellant will have established unobviousness of the
claimed invention." Since anticipation is the "epitome of obviousness,"
In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982), it
logically follows that a showing of criticality also establishes a lack of
anticipation of the claimed invention.
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