Appeal 2006-2507
Application 10/106,473
in the art.” 35 U.S.C. § 103. Therefore, a reference disclosure must be
evaluated for all that it fairly teaches and not only for what is indicated as
preferred. In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969).
According to the Examiner, “[a] heating time of 12 hours is
reasonably suggested because the artisan has guidance to heating times
above 10 hours and knows from the references what features are to be
optimized by this heating” (Answer 9). Whether optimization of a
parameter would have been prima facie obvious depends upon what the prior
art discloses with respect to that parameter. See In re Sebek, 465 F.2d 904,
907, 175 USPQ 93, 95 (CCPA 1972). In this case, the Examiner found that
the prior art teaches that toner size is controlled by heating time. Moreover,
the Examiner correctly noted that Kmiecik-Lawrynowicz’s use of the term
“about” indicates that the inventors did not intend to limit the claimed ranges
to their exact end-points. See In re Harris, 409 F.3d 1339, 1343,
74 USPQ2d 1951, 1954 (Fed. Cir. 2005).
In our view, the Examiner’s findings are sufficient to establish a prima
facie case of obviousness, such that the burden shifted to Appellants to rebut
the Examiner’s showing of obviousness. See In re Dillon, 919 F.2d 688,
692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc). We note that our
reviewing court and its predecessor have, in a number of cases, similarly
concluded that even though “[a] modification results in great improvement
and utility over the prior art, it may still not be patentable if the modification
was within the capabilities of one skilled in the art, unless the claimed
ranges produce a new and unexpected result which is different in kind and
not merely in degree from the results of the prior art." In re Huang,
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