Appeal No. 2005-0359
Application No. 09/333,917
(meth)acrylate composition. Thus, we are in complete agreement
with the examiner that Hari’s disclosure would have led one of
ordinary skill in the art to formulate a composition encompassed
by appealed claim 1 or 10. In this regard, it is well settled
that when ranges recited in a claim overlap with ranges
disclosed in the prior art, a prima facie case of obviousness
typically exists and the burden of proof is shifted to the
applicants to show that the claimed invention would not have
been obvious. In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d
1379, 1382-83 (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 (Fed. Cir. 1990).
The appellants argue that Hari places no carbon chain
limits on the (meth)acrylate component, except that
mono(meth)acrylates of 5 carbon atoms or more cannot be more
than 50% by wt. (Appeal brief at 7.) This argument is not
persuasive, because: (1) appealed claim 1 places no limits on
the length of the carbon chain for the (meth)acrylate; and (2)
the amount of C5 or higher (meth)acrylates in Hari’s composition
may be as low as zero.
The appellants allege that Hari prefers methyl
(meth)acrylate in “major amounts” because Hari’s most preferred
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