Appeal No. 2004-0024
Application No. 09/249,922 Page 15
This court and its predecessors have long held,
however, that even though applicant's modification
results in great improvement and utility over the prior
art, it may still not be patentable if the modification
was within the capabilities of one skilled in the art,
unless the claimed ranges "produce a new and unexpected
result which is different in kind and not merely in
degree from the results of the prior art."
Additionally, as stated in In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990):
The law is replete with cases in which the difference
between the claimed invention and the prior art is some
range or other variable within the claims. . . .
These cases have consistently held that in such a
situation, the applicant must show that the particular
range is critical, generally by showing that the
claimed range achieves unexpected results relative to
the prior art range [citations omitted].
In the present case, we find from the Declaration of Mr.
Wood (page 3) that "we now believe that the high color
temperature at or above 5000 degree Kelvin is responsible for
some of these unexpected results as well.. . . The higher color
temperatures combined with the use of the arc lamp allows a
tighter light beam to penetrate further and be seen better than
was possible with the prior art." From this evidence, we find
that the particular limitation of at or above 5000/ Kelvin is
critical, and with the ARC lamp, achieves unexpected results
relative to the prior art disclosure of 3,800/ Kelvin color
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