Appeal 2006-2551
Application 09/423,911
(Answer 6). The Examiner also correctly finds that the hot rolling exit
temperature taught by Daly entirely encompasses the claimed hot rolling exit
temperature range, and such an overlap in ranges has been held prima facie
obvious (id.). See In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d
1379, 1382 (Fed. Cir. 2003); and In re Geisler, 116 F.3d 1465, 1469-70,
43 USPQ2d 1362, 1365 (Fed. Cir. 1997)(ranges of prior art that completely
encompass the claimed range establish an even stronger case of prima facie
obviousness, absent a showing of criticality). Additionally, we note that
Daly specifically exemplifies hot roll exit temperatures of 248-290 ºC. (col.
4, ll. 21-25), a much narrower range than the general teaching of Daly and
very similar (but still encompassing) to the claimed range. Finally, we note
that Appellants have not alleged, much less shown, any unexpected results
for the claimed hot roll exit temperature range.
Appellants argue that JP ‘896 fails to teach or suggest what Daly lacks
in that JP ‘896 discloses that the hot roll exit temperature may be above the
recrystallization temperature (Br. 5-6; Reply Br. 2).
This argument is also not persuasive. First, we note that Daly alone is
sufficient evidence to establish a prima facie case of obviousness for reasons
discussed above. Second, Appellants have not argued the pertinent
teachings of JP ‘896, i.e., the low “warm rolling” exit temperatures. Third,
even though JP ‘896 discloses a range of exit temperatures that is broader
than the claimed range, Appellants have not shown any criticality for the
subsumed temperature range as recited in claim 5 on appeal.
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence. Based on the totality of the
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