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
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