Appeal No. 2002-0250 Page 5
Application No. 08/930,771
polydiorganosiloxane polyurea segmented copolymer with an amine to isocyanate ratio of 1:0.95
to 1:1.05 (Answer at 3). Appellants do not disagree (Brief at 5).
Not only does the range of the prior art abut the claimed ranges, but it is squarely in the
middle of the two ranges of the claim. Recently, the Federal Circuit reaffirmed the long standing
principle that where the ranges of the prior art overlap or are so close that one of ordinary skill in
the art would expect to obtain the same properties, a prima facie case of obviousness is
established. See In re Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir.
2003)(citing e.g., In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA
1976)(concluding that a claimed invention was rendered obvious by a prior art reference whose
disclosed range (“about 1-5%” carbon monoxide) abutted the claimed range (“more than 5% to
about 25%”carbon monoxide)); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553
(CCPA 1974)(concluding that a claimed invention was rendered prima facie obvious by a prior
art reference whose disclosed range (0.020-0.035% carbon) overlapped the claimed range
(0.030-0.070% carbon)); In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir.
1997)(acknowledging that a claimed invention was rendered prima facie obvious by a prior art
reference whose disclosed range (50-100 Angstroms) overlapped the claimed range (100-600
Angstroms)); and Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779
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