Appeal No. 2004-2219 Page 4
Application No. 09/927,009
USPQ2d 1379, 1382 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362,
1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA
1976); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In these cases,
the burden shifts to the applicant to show that a particular range or combination of ranges is
critical, generally by showing that the claimed range or combination of ranges achieves
unexpected results relative to the prior art ranges. In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936-37 (Fed. Cir. 1990).
Appellant argues that the Examiner has failed to point out any teaching or suggestion
within Graham to modify Graham’s method or composition to that of Appellant (Brief, p. 6). On
the contrary, the teaching in Graham of ranges which, with the necessary conversions, overlap
with the ranges of claim 1 in a method otherwise the same as that claimed provides the required
“suggestion” to do what Appellant has claimed. See In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA1980)(“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” (citations omitted)).
Appellant also argues that the Examiner concedes that Graham does not disclose
admixing second components including the prepolymer, polyol, and polyisocyanate, the weight
ratio of the prepolymer to the polyol being from 9/1 to 1/9 (Brief, pp. 6-7). We find no such
concession in either the Final Rejection or the Answer. In fact, the Examiner found that Graham
teaches admixing the prepolymer and polyol in concentrations which, when translated into
weight ratios, would overlap with the claimed ratios (Answer, pp. 2-3). The Examiner’s finding
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007