Appeal No. 2006-2781 Application 10/254,671 prior art and claimed ranges overlap, as well as in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same properties.2 A prima facie case of obviousness may be rebutted by evidence of unexpected results or a showing that the prior art teaches away from the claimed invention in any material respect. In re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997). Appellants attempt to rebut the Examiner’s finding of obviousness by arguing that Fujita actually teaches away from Appellants' claimed V content.3 Br. 14. Appellants 2 See In re Geisler, 116 F.3d at 1469, 43 USPQ2d at 1365 (acknowledging that a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (50-100 Angstroms) overlapped the claimed range (100-600 Angstroms)); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990) (concluding that a claimed invention was rendered obvious by a prior art reference whose disclosed range ("about 1-5%" carbon monoxide) abutted the claimed range ("more than 5% to about 25%" carbon monoxide)); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (concluding that a claim directed to an alloy containing "0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, balance titanium" would have been prima facie obvious in view of a reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium). See also, Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1168, 77 USPQ2d 1865, 1872 (Fed. Cir. 2006) (“normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages"). 3 Appellants assert that because Fujita “teaches away” from the claimed V content, the Examiner has failed to establish a prima facie case of obviousness. An obviousness determination does not place the burden on the Examiner to show that a reference “does not teach away” from the 5Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007