Appeal 2006-2179
Application 10/735,369
1980) (“[D]iscovery of an optimum value of a result effective valiable in a
known process is ordinarily within the skill of the art.”); In re Aller, 220
F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)(“[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”).
Thus, for the factual findings in the Answer and above, we determine
that the Examiner has established a prima facie case of obviousness
regarding the claimed subject matter which has not been sufficiently
rebutted by the Appellants. Hence, we hold that the preponderance of
evidence weighs most heavily in favor of obviousness within the meaning of
35 U.S.C. § 103. Accordingly, we affirm the Examiner’s decision rejecting
the claims on appeal under 35 U.S.C. § 103.
B. OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION
Under the Judicially-created doctrine of obviousness-type double
patenting, a patentee is prohibited from obtaining an unjustified timewise
extension of the right to exclude granted through claims in a later patent
application that are not patentably distinct from claims in a commonly-
owned earlier patent. Eli Lilly & Co. v. Barr Laboratories, Inc., 251 F.3d
955, 967, 58 USPQ2d 1869, 1877-78 (Fed. Cir. 2001); In re Longi, 759 F.2d
887, 892, 225 USPQ 645, 648 (Fed. Cir. 1985) (quoting In re Zickendraht,
319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963)(“The public should also
be able to act on the assumption that upon expiration of the patent it will be
free to use not only the invention claimed in the patent but also any
modifications or variants thereof which would have been obvious to those of
ordinary skill in the art at the time the invention was made, taking into
account the skill of the art and prior art other than the invention claimed in
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