Appeal No. 2005-1247
Application No. 09/963,423 Page 10
the claimed particle size limitation in the applied references.3
In this regard, we note that the examiner’s speculation about the
range of variance from the average diameter sizes that may be
3 See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936-37 (Fed. Cir. 1990)(concluding that a claimed invention was
rendered obvious by a prior art reference whose disclosed range
was “about 1-5%” carbon monoxide whereas the claimed range was
more than 5% to about 25% carbon monoxide). The court in
Woodruff did not affirm the obviousness rejection by holding that
anticipation is the ultimate or epitome of obviousness. Cf., In
re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
“[A]nticipation under § 102 can be found only when the
reference discloses exactly what is claimed and that where there
are differences between the reference disclosure and the claim,
the rejection must be based on § 103 which takes differences into
account.” Titanium Metals Corp. of America v. Banner, 778 F.2d
775, 780, 227 USPQ 773, 777 (Fed. Cir. 1985).
In cases involving overlapping ranges, our current and
previous reviewing courts have consistently held that even a
slight overlap in range establishes a prima facie case of
obviousness. See In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d
1362, 1365 (Fed. Cir. 1997)(acknowledging that a claimed
invention was rendered prima facie obvious by a prior art
reference whose disclosed range (50 to 100 Angstroms) overlapped
the claimed range (100 to 600 Angstroms) at one point); In re
Woodruff, supra; and In re Malagari, 499 F.2d 1297, 1303, 182
USPQ 549, 553 (CCPA 1974)(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)). In a more recent case, our
reviewing court held that a prima facie case of obviousness
exists when the claimed ranges are completely encompassed by the
prior art. See In re Petersen, 315 F.3d 1325, 1329-30, 65 USPQ2d
1379, 1382 (Fed. Cir. 2003)(“Selecting a narrow range from within
a somewhat broader range disclosed in a prior art reference is no
less obvious than identifying a range that simply overlaps a
disclosed range. In fact, when, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion of
obviousness is even more compelling than in cases of mere
overlap”).
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