Appeal No. 2006-1161
Application No. 10/322,254
hexapropylene oxide to FSO2( CF2)nCOF is from about 1/20 to about 100/1.” Col. 11,
lines 50-52. Instead Appellant argues “such a broad range fails to teach the range
claimed in the present invention with sufficient specificity to anticipate.” Brief at 9.
We agree that the disclosed range is broad. However, additional teachings in
Kimoto would point a skilled artisan toward the claimed invention. The skilled artisan
would have been motivated to make the monoaddition product, as Kimoto teaches the
value of p is “most preferably 0,” at least when making starting product for cation
exchange membranes. Col. 12, lines 9-17. And, when seeking the monoaddition product
(when p is zero), “the relative proportion of FSO2(CF2)nCOF should be increased.” Col.
11, lines 52-60. Thus, one of ordinary skill in the art seeking a high yield of the
monoaddition product would have been motivated to increase the relative proportion of
FSO2(CF2)nCOF used in Example 2 to optimize the 57% yield obtained in that example.
The 10% excess language of the claims falls within a disclosed range in Kimoto,
and there is sufficient teachings in Kimoto to direct the skilled artisan to use
FSO2(CF2)nCOF in excess, if the monoaddition product is sought. Given the direction
provided by Kimoto, only routine experimentation would be required to make the
claimed invention.
The Federal Circuit has addressed the situation in which a claimed range is
identified from routine experimentation:
“[I]t is not inventive to discover the optimum or workable ranges by
routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ
233, 235 (CCPA 1955). Only if the “results of optimizing a variable”
are “unexpectedly good” can a patent be obtained for the claimed
critical range. In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8
(CCPA 1977); see also In re Dillon, 919 F.2d 688, 692, USPQ2d 1897,
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007