Appeal No. 2004-0052
Application No. 09/180,432
appellants argue that there is no overlap in the fiber diameter
ranges of the claims and McCullough,3 and the preferred range of
McCullough (4 to 12 microns) clearly argues against a suggestion in
the reference to use fibers less than 2 microns (id.).
Appellants’ arguments are not well taken for the following
reasons. When the claimed range and the prior art range are very
similar (i.e., less than 2 microns and 2 microns), the range of the
prior art establishes prima facie obviousness because one of
ordinary skill in the art would have expected the similar ranges to
have the same properties. See In re Peterson, 315 F.3d 1325, 1329-
30, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003), citing Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir.
1985). Furthermore, the disclosure by McCullough of a preferred
embodiment does not teach away from the entire disclosure of the
patent, all of which must be considered in the analysis of
obviousness. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67,
70 (CCPA 1979).
3Appellants and the examiner make no distinction between
“average fiber diameter” as recited in the claims on appeal and
“fiber diameter” as disclosed and taught by the prior art (see
the Brief, Reply Brief, and Answer in their entirety).
Accordingly, for purposes of this appeal, we assume there is no
difference or no substantial difference between these two terms.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007