Appeal No. 2000-0994
Application 09/097,123
Wright, because of the transitional term “comprising.” We note that Wright teaches that the
compositions have “excellent dielectric properties” (col. 6, line 71), as pointed out by the
examiner. The compositions of Lontz contain only the two ingredients.
Accordingly, prima facie, one of ordinary skill in this art routinely following the
teachings of each of the references would have arrived at claimed compositions encompassed by
appealed claim 1. Indeed, as pointed out by the examiner (answer, pages 5 and 6), the claimed
viscosity ranges and amounts of the two ingredients are encompassed by or overlap with the
ranges for the same parameters set forth in appealed claim 1. It is well settled that where the
claimed ranges are encompassed by or overlap with the ranges for the same parameters disclosed
in the applied prior art, the claimed ranges will not patentably distinguish the claimed invention
from the prior art unless the claimed ranges are shown to be critical, such as by a showing of a
new or unexpected result, thus shifting the burden to appellants to establish the criticality of the
claimed ranges. See generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997), and cases cited therein; In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA
1980).
Accordingly, since a prima facie case of obviousness of appealed claim 1 has been
established over each of Lontz and Wright, we have again evaluated all of the evidence of
obviousness and nonobviousness based on the record as a whole, giving due consideration to the
weight of appellants’ arguments. See generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ
1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984).
We have carefully considered all of appellants’ arguments in the brief. Appellants submit
that it would require undue experimentation to select the phenyl-methyl siloxanes and
polytetrafluoroethylene powdered solid falling within the parameters specified for the claimed
dielectric compositions from the teachings of Lontz because the reference exemplifies a viscosity
for the polyorganosiloxane less than that required by appealed claim 1, does not specifically point
to phenyl-methyl siloxane or polytetrafluoroethylene powdered solids, and teaches that the
composition cannot contain more than 50% of polyorganosiloxane (brief, pages 4-6). With
respect to Wright, appellants argue that the reference teaches away from the claimed composition
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