Appeal 2006-2858
Application 10/169,910
have suggested to those of ordinary skill in the art. In re Young, 927 F.2d
588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). In evaluating the prior art
references for a suggestion, it is proper to take into account not only the
specific teachings of the references, but also any inferences which one
skilled in the art would reasonably be expected to draw therefrom. In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). The fact that
a specific embodiment is exemplified is not controlling since all disclosures
of the prior art, including non-exemplified embodiments, must be
considered. In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA
1972).
“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329,
65 USPQ2d 1379, 1382 (Fed. Cir. 2003). Moreover, optimization of a
variable which is recognized in the prior art to be a result effective variable
would ordinarily be within the skill in the art. In re Boesch, 617 F.2d 272,
276, 205 USPQ 215, 219 (CCPA 1980).
VI. RELEVANT FACTUAL FINDINGS
1. The Appellants have not disputed that Staples describes a nutritional
drink comprising at least one protein, at least one carbohydrate (sweetener)
and at least one salt (sodium ion) with an osmolarity ranging from 140 to
375 mOsmol/kg.
4
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