Appeal No. 2005-0374 Page 6
Application No. 09/891,780
be, it has not been resolved by our reviewing court or its predecessors. The issue of patentability
has, in the past, been decided in the context of obviousness. See, e.g. In re Peterson, 315 F.3d
1325, 1329, 65 USPQ2d 1379, 1382 (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 (CCPA 1976); and Malagari, 499 F.2d at 1303, 182 USPQ at 553. Suffice it to say that
our own precedent indicates that, where the prior art otherwise describes each and every
limitation of the claim, the disclosure of an endpoint of a range in the reference which is within
the claimed range is a sufficient disclosure to constitute an anticipation. Ex parte Lee, 31
USPQ2d 1105, 1106 (Bd. Pat. App. & Int. 1993).
With regard to obviousness, Appellants argue that the Examiner erred in ascertaining the
difference between the prior art and the claims (Brief, p. 6). Further, according to Appellants,
“[n]othing of record provides a basis for modifying Smith to the claims.” (Brief, p. 7).
Appellants, however, have not convinced us that the Examiner committed a reversible error. As
we explained above, the fact that Smith describes a hydrolysis step does not point to a difference
between the prior art process and the claimed process; the claims do not exclude the hydrolysis
step. The so called difference, if there is one, is in the fact that Smith recites a temperature range
different from that of the claim. But Smith fairly suggests operating the evaporator at
temperatures of about 50° C to 150° C, temperatures overlapping the claimed range, to evaporate
off hydrogen fluoride and thus concentrate the hexafluoroaresenic acid or salts thereof in the
bottoms. The suggestion that temperatures of about 50° C to 60° C are sufficient to evaporate
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007