Appeal No. 2004-2017
Application 09/501,559
arguments concerning the specific reasons set forth by the examiner to support the
combination of references, nor do appellants challenge the examiner’s citation of
admitted prior art from their specification.
Appellants argue that the examiner has not shown the hydration rate properties
at specific temperatures as recited in claims 41-70 (Brief, page 14). This argument is
not well taken since, as noted above, Rutenberg teaches that extruding the hydrated
guar gum splits will result in a product which disperses and hydrates more rapidly (col.
3, ll. 48-53). The specific rates of hydration at various temperatures clearly would be
well within the skill of the art, depending on the extruder conditions as well as other
parameters (e.g., see Rutenberg, col. 3, ll. 26-41). The law is replete with cases in
which the difference between the claimed subject matter and the prior art is some range
or other variable within the claims. These cases have consistently held that, in such a
situation, appellants must show that the particular variable is critical. See In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Appellants
have not offered any evidence of criticality on this record.
For the foregoing reasons and those stated in the Answer, we determine that the
examiner has established a prima facie case of obviousness based on the reference
evidence. Based on the totality of the record, including due consideration of appellants’
arguments, we determine that the preponderance of evidence weighs most heavily in
favor of obviousness within the meaning of section 103(a). Therefore, we affirm both
rejections on appeal.
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