Appeal 2006-1581
Application 10/2006-1581
not disclose a first stage polymer having a specific viscosity value of at least
0.7. We observe, however, that Matsuba provides for a second stage
polymer specific viscosity value of at least 0.3. Therefore, the range of
specific viscosity values for both the first and second stage polymer is not
limited to the values represented by Comparative Example 5. Hence, we are
not convinced by Appellants’ position on this issue. We also note that
because the scope of values of the specific viscosity of the second stage
polymer in each of the references fully encompasses the values claimed by
Appellants, we are not convinced that the scope of values of the specific
viscosity of the first stage polymer would not also encompass the values as
claimed. It is Appellants’ burden to show otherwise, and Appellants have
not done so.
Second, the value of “at least 0.24” fully encompasses Appellants’
claimed range of “at least 0.5”. We note that selecting a narrow range from
within a somewhat broader range disclosed in a prior art reference is no less
obvious than identifying a range that simply overlaps a disclosed range.
When, as here, the claimed ranges are completely encompassed by the prior
art, the conclusion is even more compelling than in cases of mere overlap.
The normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where, in a disclosed
set of percentage ranges, is the optimum combination of percentages. See In
re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA
1980)(“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” (citations omitted)).
See also In re Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed.
Cir. 2003). Also, it has been held that where the ranges recited in a claim
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