Appeal No. 2000-1016
Application No. 08/487,629
Assuming, arguendo, that we agree with appellants’ comments
regarding Li’s claim 1, appellants have not overcome the fact
that Li teaches a molar ratio of oxygen to hydrogen sulfide of
0.65:1. See column 2, lines 22-34 of Li (“at least 1.3 times
the stoichiometric amount of oxygen to elemental sulfur”). This
ratio makes for an oxygen to hydrogen sulfide molar ratio of at
least 0.65:1 (as stated by the examiner at the bottom of page 4
of the answer, and as not disputed by appellants on page 5 of
the brief). When we compare this ratio with a molar ratio of
0.6:1 (the upper limit of appellants’ claimed range of 0.5 to 1
and 0.6 to 1), we determine that a prima facie case has been
met. Titanium Metals Corp. v. Banner, 778 F2.d 775, 783, 227
USPQ 773, 779 (Fed. Cir. 1985). Also, where general conditions
of the appealed claims are disclosed in the prior art, it is not
inventive to discover optimum or workable ranges by routine
experimentation, and appellants have the burden of proving any
criticality. In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 218-
19 (CCPA 1980); In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955). Furthermore, we have determined that
appellants have not shown any criticality with regard to their
claimed molar ratio range for the following reasons.
Appellants discuss figures 2 and 4 on pages 5-6 of their
brief. Appellants state that these figures show their
achievement of percent conversion of hydrogen sulfide, while
achieving less production of SO2. On page 3 of the reply brief,
appellants point out that Table II of Li does not achieve
minimal production of SO2 while achieving desirable conversion of
H2S.
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