Appeal 2006-1581
Application 10/2006-1581
lie within the prior art, a prima facie case will likely exist. See In re
Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976). The
burden then shifts to appellants to show that the claimed range imparts more
than a difference in degree to make the invention as a whole separately
patentable over the prior art. Id.
In the instant case, Appellants argue that their claimed range produces
unexpected results (Reply Br. 4).
More specifically, on page 6 of the Reply Brief, Appellants argue that
there are unexpectedly superior results shown for a two-stage polymer
having a specific viscosity of at least 0.5 wherein the first stage polymer has
a specific viscosity of at least 0.7. Appellants refer to Table 4 on page 26 of
their specification, as well as Comparative Example 5 of Matsuba.
Appellants also refer to the Declaration of March 2003, and argue that it is
stated therein that (1) Comparative Example 9 of Table 4 on page 26 of the
Specification has a first step polymer viscosity value that is lower than
claimed, (2) Comparative Example 10 has first step polymer and the second
step polymer viscosity values lower than claimed, and (3) the first step
polymer obtained by Experiment in the Declaration2 has a lower specific
viscosity value than claimed.
Appellants argue that it is shown that when the above-mentioned
polymers are used as processing aids for poly (vinyl chloride), satisfactory
2 On page 9 of the Brief, Appellants also discuss this Declaration. We note
that the Experiment 1 in the Declaration involves the same procedures used
for Comparative Example 5 of Matsuba. The specific viscosity values of the
first-step polymer and the second-step polymer were 0.64 and 0.58,
respectively.
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