Appeal No. 2005-0209
Application 09/274,014
pages 4 and 8; brief, pages 11-12). We do not find in Girot a preferred range for porous silica as
argued by appellants, and indeed, the reference discloses that “[t]he most preferred mineral
moiety is porous silica . . . having a porous volume of about 0.2 to about 2 cm3/g” (col. 15, ll. 47-
50), which is, of course, the disclosed typical range for this variable regardless of the mineral
oxide matrix. In any event, we are of the opinion that the examiner’s finding that a porous
volume of about 0.2 cm3/gram of porous silica has a pore volume of “about 30%,” found to be
“correct’ by appellants, establishes as a matter of fact the lower end of the porous volume range
for porous silica that one of ordinary skill in this art would have reasonably arrived at following
the teachings of Girot.3 The calculate pore volume of porous silica of about 30% at least abuts,
as appellants acknowledge, if not slightly overlaps the upper end of the claimed pore volume
range of less than 30% of appealed claims 1, 2 and 11. Thus, on this record, we determine that
one of ordinary skill in the art would have reasonably expected silica solid supports so
encompassed by the claims and so taught by Girot to have the same properties. See generally,
In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (citing In re
Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974); Woodruff, 919 F.2d at 1577-
78, 16 USPQ2d at 1936-37; Titanium Metals Corp. of America v. Banner, 778 F.2d 775,783,
227 USPQ 773, 779 (Fed. Cir. 1985); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980).
Appellants are correct that where the difference between the claimed invention and the
applied prior art is in the respective ranges of a common variable as is the case here, appellants
can rebut the prima facie case of obviousness by showing unexpected results and/or that the
prior art teaches away from the claimed invention in any material respect. Geisler, 116 F.3d at
1470, 43 USPQ2d at 1365 (citing Malagari, 499 F.2d at 1303, 182 USPQ at 553). We are of the
opinion that appellants have not carried either burden.
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968); In re Aller, 220 F.2d
454, 458-59, 105 USPQ 233, 237 (CCPA 1955), presuming skill on the part of this person. In re
Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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