Appeal 2006-1305
Application 10/236,270
LINDA M. GAUDETTE, Administrative Patent Judge, dissenting:
I respectfully dissent from the decision of the Majority affirming the
Examiner’s rejections of appealed claims 1 and 3-20 under 35 U.S.C.
§ 103(a). In my view, the present record does not include sufficient fact
finding and explanation to enable meaningful review without resort to
speculation. See In re Hyatt, 211 F.3d 1367, 1371, 54 USPQ2d 1664, 1666
(Fed. Cir. 2000) (“Board must explain the basis for its rulings sufficiently to
enable meaningful judicial review”). More specifically, it is unclear from
the record whether the Examiner has established a prima facie case of
obviousness because the Examiner does not provide explicit interpretations
of the claim phrases “high heat resistance and cold resistance” and “high
polar content” and “low polar content.” It is further unclear from the record
whether the Appellants challenge the Examiner’s conclusions of
obviousness based on the Examiner’s claim interpretation and/or the
Examiner’s findings with respect to the prior art.
“High heat resistance and cold resistance:” A prima facie case of
obviousness may be made when the only difference between the claimed
invention and the prior art is a difference in the range or value of a particular
variable. In re Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382,
(Fed. Cir. 2003); In re Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936. In
this case, the Examiner relied on the overlapping vinyl acetate content and
melt index ranges of Watanabe’s and Appellants’ copolymers to establish
prima facie obviousness. See In re Geisler, 116 F.3d 1465, 1469, 43
USPQ2d 1362, 1365 (Fed. Cir. 2007) (“A prima facie case of obviousness
exists where the prior art and claimed ranges overlap.”). Independent
18
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: September 9, 2013