Appeal No. 2004-1872
Application No. 09/886,183
arrive at appellants’ claimed polymer composition, including its
weight average molecular weight range of from 30,000 to 300,000.
Hence, we reverse the anticipation rejection.
IV. New Ground of Rejection
Claims 7-10 and 16-19 are rejected under 35 U.S.C. § 103 as
being obvious over Rehmer.
We refer to the examiner’s findings regarding the teachings
found in Rehmer, made on pages 3-5 of the answer, and
incorporate them as our own. The examiner finds that each
element of the claims is disclosed in Rehmer, while recognizing
that Rehmer discloses a weight average molecular weight of from
50,000 to 2,000,000, while appellants’ claim a range of from
30,000 to 300,000. Appellants do not dispute these findings
regarding the teachings found in Rehmer as made by the examiner.
Appellants dispute the examiner’s conclusion of anticipation
with regard to these findings. See pages 5-7 of the brief.
As pointed out by the examiner, on page 4 of the answer,
Rehmer discloses a weight average molecular weight of from
50,000 to 2,000,000. See col. 9, lines 44-48 of Rehmer. This
disclosed range overlaps appellants’ claimed range of from
30,000 to 300,000. In addition, Rehmer teaches that molecular
weight regulators may be useful. See column 9, lines 53-59 of
Rehmer.
In cases involving overlapping ranges, we note that it has
been consistently held that even a slight overlap in range
establishes a prima facie case of obviousness. E.g., In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37
(concluding that a claimed invention was rendered obvious by a
prior art reference whose disclosed range (“about 1-5%” carbon
monoxide) abutted the claimed range (“more that 5% to about 25%
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