Appeal No. 2005-1579 Page 5
Application No. 09/963,625
is well settled that when ranges recited in a claim overlap with
ranges disclosed in the prior art, a prima facie case of
obviousness typically exists and the burden of proof is shifted
to the applicants to show that the claimed invention would not
have been obvious. In re Peterson, 315 F.3d 1325, 1329-30,
65 USPQ2d 1379, 1382-83 (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 (Fed. Cir.
1990).
As for the claimed amount of sulfuric acid employed per
liter in the anodizing step (bath), the examiner recognizes that
Korte does not disclose the concentration of sulfuric acid used
and turns to Gillich for a teaching as to a conventional sulfuric
acid concentration (20 percent) used in anodizing an aluminum
alloy, which concentration the examiner has found to be consonant
with the sulfuric acid concentration in grams per liter claimed
by appellants.2 In this regard, we are in agreement with the
examiner’s assessment that it would have been obvious to one of
ordinary skill in the art at the time of the invention to
determine the workable sulfuric acid concentrations for Korte’s
2 Appellants do not challenge the examiner’s concentration
conversion.
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