Appeal No. 2000-1836
Application 08/917,336
that Reznik is silent with respect to the pH range claimed as desirable by appellants for hydrogen
containing purified drinking water does not patentably distinguish the appealed claims from the
teachings of this reference in the absence of a showing of the criticality of the claimed pH range.
See In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975) (“Appellants have chosen
to describe their invention in terms of certain physical characteristics . . . . Merely choosing to
describe their invention in this manner does not render patentable their method which is clearly
obvious in view of [the reference]. [Citation omitted.]”); In re Aller, 220 F.2d 454, 456, 105
USPQ 233, 235 (CCPA 1955) (“[W]here 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.”).
Accordingly, since the examiner has established a prima facie case of obviousness over
Reznik, 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. We agree with
appellants that Reznik is silent with respect to pH (brief, page 4). However, the silence of the
reference in this respect does not suggest that one of ordinary skill in this art would not have
arrived at the claimed range in preparing drinking water from purified water by the methods in
Reznik. We find no argument in the brief, and no evidence in the record, which establishes the
criticality of the claimed range. See Skoner, supra; Aller, supra.
With respect to appellants’ arguments of the individual appealed claims (brief, pages 5-
6), we have addressed the arguments with respect to claims 2, 8 and 16, which we interpreted
above to encompass the same or substantially the product as appealed claim 1, in our discussion
above. While appellants contend that the hydrogen concentration and the oxidation-reduction
potential ranges as specified in appealed claims 3 through 5 and appealed claims 6 and 7,
respectively, are not suggested by Reznik, we find that appellants have not established the
criticality of these claimed ranges. Indeed, Reznik discloses obtaining oxidation-reduction
Claims (8th ed., August 2001; 700-52).
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