Appeal No. 2006-2484 Παγε 10
Application No. 10/837,337
In addition to the arguments advanced with respect to
independent claim 1, appellants maintain that a sulfur-containing
polymer corresponding to the polymer having a number-average
molecular weight range specified in representative dependent
claim 28 is not taught by the applied references. We disagree
for reasons expressed by the examiner in the answer (pages 3, 4
and 6). See, e.g., column 4, lines 30-35 of DeMoss for a
teaching of using polymers with a number average molecular weight
corresponding to that claimed by appellants. It is well settled
that when ranges recited in a claim overlap with and/or touch
ranges disclosed in the prior art, a prima facie case of
obviousness typically exists and the burden of proof is shifted
to the applicants to show that the claimed invention would not
have been obvious. In re Peterson, 315 F.3d 1325, 1329-30, 65
USPQ2d 1379, 1382-83 (Fed. Cir. 2003); In re Geisler, 116 F.3d
1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed.
Cir. 1990). As for the Smith reference, we note that the lower
limit of the molecular weight of “about 8,000" (column 3, lines
54-65) and the additional disclosure at column 6, lines 1-13
reasonably suggest that polymers with a number average molecular
of at or near 8,000 would be suitable as at least one polymer
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