Appeal 2006-2307
Application 10/370,686
nm.4 However, the claimed size range (less than 500nm) is so close to the
prior art range, that one of ordinary skill in the art would have reasonably
arrived at the use of a polymer component having a size within the claimed
adjacent range upon routine experimentation to determine the precise outer
limits of workable sizes of the high Tg polymer employed in JP05-271645.
It is well settled that a prima facie case of obvious exists when the claimed
range and the prior art range do not overlap but are close enough such that
one skilled in the art would have expected them to have the same properties.
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773,
779 (Fed. Cir. 1985).
As for the argument that JP05-271645 teaches away from the use of
particle size diameters less than 500 nm, we again note that JP05-271645
includes a specific comparative Example with a particle size within the
claimed range. Moreover, one of ordinary skill in the art would have
recognized that the relative size of the high Tg polymer could vary somewhat
from the specifically disclosed size range of JP05-271645 while obtaining
acceptable properties for the final blended pressure sensitive adhesive. This
is so because the pressure sensitive adhesive properties depends on other
factors besides the the high Tg polymer size. For example, the particular
polymers employed in the blend, the particular glass temperature (Tg) of the
high Tg polymer, and the amount thereof employed in the blend have an
effect on the properties of the adhesive blend. See, e.g., Table 3 of JP05-
271645.
4 We note that Appellant does not argue that the claimed number average
size represents a patentably significant difference over the particle size
measure employed by Otsuki.
7
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