Appeal No. 2000-1162
Application 08/967,876
In re Lemin, 332 F.2d 839, 841, 141 USPQ 814, 815-16 (CCPA 1964) (“Generally speaking
there is nothing unobvious in choosing ‘some’ among ‘many’ indiscriminately.”).
Accordingly, prima facie, one of ordinary skill in this art routinely following the
teachings of each of Joyner and Bush would have arrived at claimed compositions encompassed
by appealed claim 5 with respect to Joyner, and by appealed claim 8 with respect to Joyner and
Bush. Indeed, as pointed out by the examiner, the claimed CTAB ranges either fall within or
overlap the range disclosed by Joyner and the claimed amounts of the carbon black per 100 parts
by weight of EPDM overlap with the range disclosed by each of Joyner and Bush. 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); see also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936 (Fed. Cir. 1990) (“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. [Citations
omitted.] 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. [Citations omitted.]”).
Accordingly, since a prima facie case of obviousness has been established over the
applied prior art, 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
and the evidence in the specification. 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); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We have carefully considered all of appellants’ arguments and the evidence presented in
the specification as relied on by appellants in the brief and reply brief. Appellants’ principal
argument is that neither Joyner nor Bush discloses the relevance of the CTAB and DBP carbon
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