Appeal No. 2006-1587
Application No. 10/020,768
778 F.2d at 782-83, 227 USPQ at 779, wherein an obviousness
conclusion was upheld notwithstanding plural claim distinctions.
Claims 2-8, 11, 15, 16 and 21 were not separately argued
and, therefore, stand or fall with independent claim 1.
Regarding claim 13, Appellant argues that this claim
“provides that the base web includes glass fibers in an amount
of about 25 to about 40% by weight of the fibers” and that
“[t]his lower weight percentage further distances the claimed
invention from the Heidweiller patent” (Brief, page 11). The
Examiner maintains the position that this limitation is a result
effective variable (Answer, page 16).
As we point out above, the Examiner’s position is supported
by long standing legal authority. Woodruff, 919 F.2d at 1578,
16 USPQ2d at 1936-37; Boesch, 617 F.2d at 276, 205 USPQ at 219;
Aller, 220 F.2d at 456, 106 USPQ at 235. While Appellant
attempts to distinguish Woodruff on the basis that the ranges at
issue in Woodruff were contiguous, such a per se rule is not
law. Ranges do not have to be contiguous to support a prima
facie case of obviousness. See, for instance, Aller, which held
that “where the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” Aller, 220 F.2d
at 456, 105 USPQ at 235. Moreover, other cases support
obviousness where there is no overlap in ranges but a more
general discussion. See In re Huang, 100 F.3d 135, 139, 40
USPQ2d 1685, 1688-89 (Fed. Cir. 1996)(affirming the rejection of
claims requiring thickness ratios above those employed in the
prior art); In re Schwarze, 536 F.2d 1373, 1377, 190 USPQ 294,
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