Appeal No. 2003-0907
Application No. 09/337,278
We agree with the Examiner’s determination that Miyashita’s resistivity of
about 5 MScm overlaps the resistivity of claim 1 and renders the subject matter
prima facie obvious.3 (Answer, p. 6).
Appellants argue that the Examiner has not established a prima facie case of
obviousness because the brushes of Miyashita do not touch the semiconductor
device. (Brief, p. 5).
We are not persuaded by Appellants’ argument. As discussed above, a
person of ordinary skill in the art would have recognized the problems of electrical
build-up on the semiconductor device by allowing the brushes to contact the device.
A person of ordinary skill in the art would have also recognized the problem of
3 In cases involving overlapping ranges, the CAFC and CCPA have consistently held
that even a slight overlap in range establishes a prima facie case of obviousness. E.g., In re
Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936-37 (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 at 1303, 182 USPQ at 553 (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)); see also In re Geisler, 116 F.3d
at 1469, 43 USPQ2d at 1365 (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)). The CAFC has also held that a prima facie case of
obviousness exists when the claimed range and the prior art range do not overlap but are close
enough such that one skilled in the art would have expected them to have the same properties.
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)
(concluding that a claim directed to an alloy containing “0.8% nickel, 0.3% molybdenum, up to
0.1% maximum iron, balance titanium” would have been prima facie obvious in view of a
reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum, balance titanium and
0.94% nickel, 0.31% molybdenum, balance titanium).
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