Appeal No. 2003-1960
Application No. 09/830,841
America v. Banner, 778 F.2d at 780, 227 USPQ at 777. “[I]t has
long been held that the disclosure in the prior art of any value
within a claimed range is an anticipation of the claimed range.”
In re Wertheim, 591 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976).
However, in the fact situation unique to this appeal, the examiner
has only cited examples which fall within one of the claimed
ranges, and has failed to point to any specific embodiment or
example describing values within both claimed ranges (see factual
finding (6) above).
The mere existence of overlap at one point (“touching” at one
endpoint) in a range for an amount of a reactant used in a reaction
to form the claimed and prior art product does not per se provide a
description of the claimed product within the meaning of section
102. See In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379,
1382 (Fed. Cir. 2003)(“A prima facie case of obviousness typically
exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art,” with selection of a narrow range from
within a somewhat broader range disclosed in a prior art reference
no less obvious than identifying a range that simply overlaps a
disclosed range; in fact, when the claimed ranges are completely
encompassed by the prior art, the conclusion of obviousness is even
more compelling than in cases of mere overlap). In cases involving
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