Appeal No. 2000-1019
Application No. 08/623,852
modification results in great improvement over the prior art, it
may still not be patentable if the modification was within the
capabilities of one skilled in the art. In re Aller, 220 F.2d
454, 456, 105 USPQ 233, 235 (CCPA 1955). More particularly,
where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation. Id. However, the
applicant can rebut the prima facie case of obviousness by
establishing the existence of unexpected properties in the range
claimed, or by showing that the prior art, in any material
respect, taught away from the claimed invention. In re Geisler,
116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997).
These ranges, which produce new and unexpected results, are
termed “critical” ranges, and the applicant has the burden of
proving such criticality. In re Aller, et al., 220 F.2d at 456,
105 USPQ at 235. To satisfy this burden, the new and unexpected
results must differ in kind, and not merely in degree. Id.
The examiner rejected claims 1 through 13 as being
“unpatentable over Bender ‘490 taken with Pazdej ‘777" (Answer,
Paper No. 19, page 4). The examiner argues that
13
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