Ex Parte Fairley et al - Page 7

                   Appeal No. 2006-2731                                                                                               
                   Application No. 10/102,077                                                                                         

                           The Examiner responds “a particle size of 0.3 microns (below the claimed range)                            
                   shows an improved deposition” compared to those in the claimed range.  Answer 7.                                   
                           Appellants’ data support the Examiner’s position with respect to improved                                  
                   deposition.   See Specification at 36, ll. 9-13 (showing higher deposition efficiency at                           
                   sizes below Appellants’ claimed range).  However, Appellants’ argument focuses on                                  
                   stability, not improved deposition.  And their data show that compositions made with                               
                   smaller sized particles (below their claimed 0.8 micron) are less stable than those within                         
                   the claimed range (as measured by change in viscosity).  See id.  The Examiner’s findings                          
                   with respect to deposition miss the point.  See, e.g., In re Chupp, 816 F.2d 643, 646, 2                           
                   USPQ2d 1437, 1439 (Fed. Cir. 1987) (“Evidence that a compound is unexpectedly                                      
                   superior in one of a spectrum of common properties . . . can be enough to rebut a prima                            
                   facie case of obviousness.”).                                                                                      
                           Appellants’ showing may be sufficient to establish that particles smaller than 0.3                         
                   microns yield a less stable shampoo.  However, such a showing with respect to one end                              
                   of a claimed range does not overcome a prima facie case of obviousness with respect to                             
                   the entire range.  “Claims which are broad enough to read on obvious subject matter are                            
                   unpatentable even though they also read on nonobvious subject matter.”  In re Lintner,                             
                   458 F.2d 1013, 1015, 173 USPQ 560, 562 (CCPA 1972).  See also In re Muchmore, 433                                  
                   F.2d 824, 826, 167 USPQ 681, 683 (CCPA 1970) (claim held “too broad in the sense of                                
                   section 103, since it reads on both obvious and unobvious subject matter").                                        
                           The combination of Coffindaffer with Thiel yields Appellants’ claimed invention                            
                   with particle sizes of “about 1 micron” and “about 2 microns.”  See, e.g., Coffindaffer at                         
                   13, l. 13.  Appellants’ data do not rebut the Examiner’s prima facie case with respect to                          


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