Appeal No. 2005-1459
Application No. 09/950,612
oxides, as required by claims 3 and 6 (Answer, page 5).3
However, the examiner concludes that the proportions of each
abrasive metal oxide and the particle sizes would have been
obvious to one of ordinary skill in this art at the time of
appellants’ invention, given that the listed abrasives are
considered equivalent for abrading purposes (id.). We agree.
The law is replete with cases in which the difference between the
claimed subject matter and the prior art is some range or other
variable within the claims. These cases have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing unexpected
results for the claimed range. See In re Woodruff (and cases
cited therein), 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed.
Cir. 1990). We note that appellants have not submitted any
evidence regarding unexpected results for the ratios and particle
sizes set forth in claims 3 and 6 on appeal.
With regard to claim 2 on appeal, appellants argue that
there is no “hint of a suggestion” in Robinson that ceria and
3We note that Robinson does teach the effect of particle
size for the abrasive particles in the slurry on the CMP process
(col. 5, ll. 3-24).
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