Appeal No. 2005-1332 Page 7
Application No. 09/774,064
We agree with the Examiner that it would have been obvious to one of ordinary skill in
the art to select calcium carbonate as the inorganic pigment in the composition of Hoshino as it
is expressly suggested in the reference. It follows then that Hoshino suggests the use of a
pigment containing 70-97% by weight calcium carbonate as required by claim 1.
Appellants argue that the Examiner has not met his burden in establishing a prima facie
case of obviousness because he has not pointed to any disclosure within Hoshino which indicates
a realization of the problem faced by Appellants or which would motivate one skilled in the art
to form Appellants’ composition (Brief, p. 6). This argument is not persuasive for several
reasons. First, the prior art need not address Appellants’ problem. In re Dillon, 919 F.2d 688,
693, 16 USPQ2d 1897, 1901-1902 (Fed. Cir. 1990)(en banc), cert. denied, 500 U.S. 904 (1991).
Second, Hoshino recognizes both gloss and brightness (whiteness), the properties focused on by
Appellants, as important properties to be optimized (Hoshino, ¶ 0008). Third, Hoshino describes
dispersions having the bimodal particle composition claimed, describes calcium carbonate as one
of the inorganic pigments which can be combined with the emulsion particles and suggests
amounts within and/or overlapping those of the claim. Under these circumstances, a case of
prima facie obviousness is properly established. Where the difference between the claimed
invention and the prior art is some range or other variable within the claims, the applicant must
show that the particular range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936-37 (Fed. Cir. 1990).
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