Appeal No. 2005-0374 Page 5
Application No. 09/891,780
claimed range of 40-60° C, in the process of Smith is sufficient to render the claim anticipated.
See Ex parte Lee, 31 USPQ2d 1105, 1106 (Bd. Pat. App. & Int. 1993)(“In our view, the explicit
disclosure of a composition based on a polyolefin resin having a melt index of 0.1 represents a
specific disclosure of a discrete embodiment of the invention disclosed by Lee which amounts to
a complete description and, thus, an anticipation of appellant’s claim 1.” (footnote omitted)).
Appellants also argue that “[e]ven where the prior art discloses a range, which overlaps,
but no specific examples falling within the range are disclosed, anticipation must be based on the
prior art disclosure of the claimed invention with sufficient specificity.” (Brief, p. 7). According
to Appellants, “[i]f the claims recite a narrow range and the prior art discloses a broad range and
there is evidence of unexpected results within the claim-recited narrow range, it is reasonable to
conclude that narrow range is not disclosed with sufficient specificity to constitute anticipation
of the claims.” (Id.). Appellants state that “[s]uch is not the case here” and “[h]ence the
Examiner must provide reasons for anticipation and obviousness of the narrow range.” (Id.).
As a first matter, we note that Appellants do not rely upon any evidence of unexpected
results in this appeal. Therefore, the question of whether such evidence would support a
determination that it is reasonable to conclude that the claimed range is not disclosed with
sufficient specificity in Smith to constitute an anticipation is merely an academic question. That
being said, the question of the relationship between anticipation, obviousness, and unexpected
results in cases of overlapping ranges has been called an interesting one. See In re Malagari,
499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). However interesting the question may
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