Appeal No. 2005-1934 Page 7
Application No. 10/022,357
anodes having both oxide layers, i.e, a TiO2 layer and a RuO2 layer, as set forth in Example 6 of
Beer, sintered at various temperatures within the claimed ranges compared to the broader
disclosed ranges of Beer. A showing that the claimed temperature ranges are critical would
overcome the prima facie case of obviousness.
Appellants argue that Beer does not mention that the performance of the electrode is
unexpectedly improved when sintering at temperatures above 600°C (Brief, p. 7). However,
because Beer specifically describes a temperature range that overlaps the claimed range, no
disclosure of an unexpected improvement within that range is required within Beer. The
disclosure of overlapping ranges is enough to establish a case of prima facie obviousness and
shift the burden to Appellants with regard to showing criticality of the claimed combination of
temperature ranges for their result. Appellants do not rely upon any showing that compares
properties of the two oxide layer structure of Example 6 of Beer, sintered as disclosed therein,
with the claimed structure, sintered at the claimed temperatures. Appellants’ discussion of the
benefits described in the specification is not on point because the specification focuses on
differences between the claimed two oxide layer preparation and anodes made without any
intermediate layer. But Beer represents closer prior art because Beer includes an intermediate
layer. The more probative comparison would be between the claimed method and the method of
the closest prior art, i.e, the method of Beer. No such comparison is made by Appellants.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 2 which has not been sufficiently rebutted by Appellants.
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