Appeal No. 2001-2491 Page 6
Application No. 09/168,564
§ 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894,
904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). Looking at the evidence as a whole there is a
reasonable expectation that a useful hydroisomerization catalyst would result when a Group VIB
metal is used together with a Group VIII metal on the carrier described in claims 1-3 of Perego.
That is all that is required to make out a prima facie case of obviousness under 35 U.S.C. §
103(a).
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claim 1.
With respect to claims 2, 6 and 7, Appellants argue that the combination of references
neither disclose nor suggest the further limitations of these claims (Brief at 9-10). We disagree.
Claims 1-3 of Perego describe a catalyst carrier having characteristics either exactly the same,
encompassing or closely overlapping the ranges set forth in claims 2, 6 and 7. Where the
difference between the claimed invention and the prior art is some range or other variable within
the claims, the applicants must show that the particular range is critical, generally by showing that
the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919
F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). No such showing commensurate in
scope with the claims is advanced.
With respect to Appellants’ argument that the prior art combination does not disclose or
suggest the mixture of metals of claim 3, i.e. molybdenum or tungsten in combination with nickel
or cobalt, we find that there is such a suggestion. Perego generally discloses in claim 1 the use of
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