Appeal 2006-2468
Application 10/149,875
simply overlaps a disclosed range; in fact, when the claimed ranges are
completely encompassed by the prior art, the conclusion of obviousness is
even more compelling than in cases of mere overlap); In re Geisler,
116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); and In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir.
1990).
Moreover, Seiden teaches desirable properties for the claimed
components, with appropriate maximum and minimum contents, and thus
would have led one of ordinary skill in this art to alter the composition
within the ranges taught therein depending on the particular level of those
properties desired for the resultant reduced fat composition. In this regard,
Seiden teaches properties for the fat composition that substantially
correspond with the properties desired by Appellants. Compare, for
example, the abstract; col. 1, ll. 17-26 and 59-62; col. 2, ll. 58-68; and col.
10, l. 40 through col. 12, l. 31 of Seiden with Appellants' specification, page
1, first paragraph, and Section D appearing at pages 19-22 thereof).
It is our judgment, therefore, that one of ordinary skill in the art would
have found it prima facie obvious based on the prior art teachings as a whole
to determine by routine experimentation a workable or even optimum range
of PFAP and RCT ratios in the reduced calorie fat composition of Seiden,
thus arriving at a composition encompassed by representative appealed
claims 1 and 3. In re Peterson, 315 F.3d at 1330, 65 U.S.P.Q.2d at1382
(“The normal desire of scientists or artisans to improve upon what is
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