Appeal No. 2006/0764
Application No. 10/281,733
(concluding that a claimed invention was rendered obvious by a
prior art reference whose disclosed range of “about 1-5%” carbon
monoxide abutted the claimed range of “more than 5% to about
25%” carbon monoxide)); In re Malagari, 499 F.2d 1297, 1303,
182 USPQ 549, 553 (concluding that a claimed invention was
rendered prima facie obvious by a prior art reference whose
disclosed range of 0.020-0.035% carbon overlapped the claimed
range of 0.030-0.070% carbon); see also In re Geisler, 116 F.3d
1465, 1469, 43 USPQ2d 1362, 1365 (acknowledging that a claimed
invention was rendered prima facie obvious by prior art
reference whose disclosed range of 50-100 Ångstroms overlapped
the claimed range of 100-600 Ångstroms). Also, it 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
applicant 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). Appellants have not provided
such a showing.
Lastly, appellants argue that the boiling point of the
instantly claimed HCFC is different from the boiling point of
the HCFC of Doerge. We refer to the examiner’s explanation made
in the paragraph bridging pages 4-5 of the answer, and for the
reasons provided therein, we are not persuaded by such argument.
In view of the above, we affirm the 35 U.S.C. § 103
rejection of claims 1-24 as being obvious over Doerge.
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