Appeal No. 2006-1738 Page 6
Application No. 10/059,564
for making bait tablets. The examiner treated these values as the same (Examiner’s
Answer, paragraph spanning pages 5-6), concluding that compacting cellulose utilizing
the pressure disclosed in Minagawa (“about 500 kg/cm2”) would result in a compacted
composition having the claimed density.
We see no reason to treat the prior art pressure of “about 500” as different from
the 516.53 value which is disclosed in appellant’s application to produce a composition
having a density of 1.033 g/cc. Appellant urged that the compacting pressures
disclosed in Minagawa were “much lower” than the pressures used in their “invention”
(Appeal Brief, page 9), but did not address the degree of disparity between the prior art
“about 500 kg/cm2” pressure condition and their own of 516.53 kg/cm2, which are no
more than 3.3% ((516.53-500)/500) different. Nor did they explain why “about 500”
would not be understood by the skilled worker to overlap with their own pressure of
516.53, when the word “about”3 is clearly a term of approximation.
Appellant characterized their own pressure range as “between 516 and 1377
kg/cm2.” Reply Brief, page 5, lines 24-26. Thus, the pressure range utilized in the
application (“between 516 and 1377 kg/cm2”) to produce the compositions with the
claimed density overlaps with the pressure range disclosed in Minagawa (“about 10 to
about 500 kg/cm2”).
“When patentability turns on the question of obviousness, the search for and
analysis of the prior art includes evidence relevant to the finding of whether there is a
teaching, motivation, or suggestion to select and combine the references relied on as
3 “about …. APPROXIMATELY.” Webster’s New Collegiate Dictionary, G & C Merriam Co., 1976.
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