Appeal 2006-1581
Application 10/2006-1581
claims which the evidence is offered to support. In re Clemens, 622 F.2d
1029, 1035, 206 USPQ 289, 296 (CCPA 1980); In re Greenfield, 571 F.2d
1185, 1189, 197 USPQ 227, 230 (CCPA 1978); In re Lindner, 457 F.2d 506,
508, 173 USPQ 356, 358 (CCPA 1972); In re Tiffin, 448 F.2d 791, 792, 171
USPQ 294, 294 (CCPA 1971).
We also note that the law is replete with cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims. See, e.g., Gardner v. TEC Sys., Inc., 725 F.2d
1338, 220 USPQ 777 (Fed. Cir.), cert. denied, 469 U.S. 830 [ 225 USPQ
232 ] (1984); In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); In
re Ornitz, 351 F.2d 1013, 147 USPQ 283 (CCPA 1965); In re Aller, 220
F.2d 454, 105 USPQ 233 (CCPA 1955). These cases have consistently held
that in such a situation, the applicant must show that the particular range
is critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range. Gardner, 725 F.2d at 1349, 220 USPQ
at 786 (obviousness determination affirmed because dimensional limitations
in claims did not specify a device which performed and operated differently
from the prior art); Boesch, 617 F.2d at 276, 205 USPQ at 219; Ornitz, 351
F.2d at 1016-17, 147 USPQ at 286; Aller, 220 F.2d at 456, 105 USPQ at
235. Appellants have made no such showing in the present case.
In view of the above, we therefore affirm each of the Examiner’s 35
U.S.C. 102(b)/103(a) rejections. See, e.g., In re Thorpe, 777 F.2d 695, 697-
98, 227 USPQ 964, 966 (Fed. Cir. 1985), wherein the examiner's rejection of
product-by-process claims under §102/103, based on similarity of reactants,
reaction conditions, and properties, amounted to a prima facie case of
unpatentability.
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