Appeal No. 2001-0233
Application 08/668,640
that criticality (Reply Brief, page 2, lines 10 et seq.). The Examiner, on the other hand,
has put forth a prima facie case of obviousness vis-à-vis Takeda alone. The Examiner
further remains unpersuaded by the evidence, noting that the instant claims preclude
the presence of materials which are initially silicon containing, while the ‘759 patent
urged as evidence requires them. Further, the Examiner challenges the
correspondence between the materials of the ‘759 patent and the instant claims.
Finally, as regards the instant specification, the Examiner asserts that no criticality is
established for quantity or particle size (See, generally, the Examiner’s Answer, page 5,
line 10 – page 6, line 15).
We note that it is not inventive to discover optimum or workable ranges by
routine experimentation, and appellants have the burden of proving any criticality. In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 218-19 (CCPA 1980); In re Aller, 220 F.2d
454, 456, 105 USPQ 233, 235 (CCPA 1955). There are certain elements of this burden
which must be met once a prima facie case of obviousness has been established.
First, we note that appellants must show that the claimed 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). Second, one relying on data to establish unexpected results has a burden of
establishing that unexpected results are actually obtained and the significance of those
results to one having ordinary skill in the art. Cf. In re Klosak, 455 F.2d 1077, 1080, 173
USPQ 14, 16 (CCPA 1972) (inventor must show that the results claimed to be obtained
with a claimed invention are actually obtained with the invention). Third, in order to
establish unexpected results for a claimed invention, objective evidence of
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