Appeal No. 2004-1872
Application No. 09/886,183
carbon monoxide)); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ
549, 553 (concluding that a claimed invention was rendered prima
facie obvious by a prior art reference whose disclosed range
(0.020-0.035% carbon) overlapped the claimed range (0.030-0.070%
carbon)); see also In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d
1362, 1365 (acknowledging that a claimed invention was rendered
prima facie obvious by prior art reference whose disclosed range
(50-100 Angstroms) overlapped the claimed range (100-600
Angstroms)).
We determine that appellants’ claimed weight average
molecular weight overlaps the range disclosed by Rehmer and
therefore is rendered obvious by Rehmer.
In view of the above, we reject claims 7-10 and 16-19 under
35 U.S.C. § 103 as being obvious over Rehmer.
This decision contains a new ground of rejection pursuant
to 37 CFR § 41.50(b)(effective September 13, 2004, 69 Fed. Reg.
49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new
ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner
. . . .
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