Appeal No. 2002-1768
Application 09/538,786
at least cyclopentane and water, wherein the water is present in the blowing agent composition in
an amount up to 1.0 parts by weight for every 100 parts by weight of polyol. Thus, the appealed
claims encompass processes in which is used some amount of water, no matter how small, up to
the stated amount.
The examiner finds that Dietrich teaches a process of producing a rigid polyurethane
foam from the specified components, wherein cyclopentane and water can be the blowing agents
(see cols. 1-3, particularly col. 2, lines 5-6, and col. 3, lines 3-4). The examiner further finds that
Dietrich teaches that water is optional (col. 2, lines 5-6, and col. 3, lines 3-4) and uses 2.0 parts
of water in the illustrative and comparative Examples (cols. 5-6). The examiner finds that the
teachings of Dietrich thus differ from the claimed process as encompassed by appealed claim 4 in
not teaching the range of water specified in appealed claim 4, and determines that one of ordinary
skill in this art would have routinely arrived at the claimed range as an optimal or workable range
by following the teachings of the reference, citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955) (“[W]here 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.”). Thus,
the examiner concludes that the claimed process is prima facie obvious over Dietrich in the
absence of establishing the criticality of the claimed range, such as by showing an unexpected
result.
We agree with the examiner’s analysis. Indeed, from the disclosure in Dietrich that water
is an optional material in the process and that it can be present in the amount of 2 parts by weight
for 60 parts by weight of polyol in the Examples, which is 3.33 parts by weight of water for every
100 parts by weight of polyol, one of ordinary skill in this art would have inferred from the
reference that the amount of water which can be present ranges from 0 to 3.33 parts.1 Thus, the
claimed range is encompassed by the range taught by Dietrich, and the burden shifts to appellants
to establish the criticality of the claimed range. See In re Woodruff, 919 F.2d 1575, 1578, 16
1 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see generally, In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed.
Cir. 1992); presuming skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226
USPQ 771, 774 (Fed. Cir. 1985).
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