Appeal 2006-3366
Application 10/864,041
teachings of the prior art and the reasoned positions in the rejection. Since
Appellant bears the burden of persuasion at this point in the prosecution, and
has not presented any evidence of criticality of the range, we are not
persuaded by the Appellant’s mere arguments. Appellant can rebut a prima
facie case of obviousness based on overlapping ranges by showing the
criticality of the claimed range. "The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims. . . . In such a situation, the applicant must
show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range." In
re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
As stated above, Appellant has not met the burden by providing any
evidence of criticality.
While we acknowledge Appellant’s attempt to differentiate the
disclosed invention from that of the combination of teachings relied upon in
the instant rejection, we find that Appellant has submitted no extrinsic
evidence in the present record and identified no specific intrinsic evidence in
the instant prosecution history which clearly evidences why it would not
have been obvious to one skilled in the art at the time of the invention to
combine the instant teachings in the manner advanced by the Examiner.4
4 See, Takeda Chemical Industries, Ltd. v Alphapharm Pty., Ltd (Fed Cir,
06-1329, 6/28/2007) slip Opinion at 13-16. We distinguish Takeda from the
instant prosecution history where Appellant has not presented any extrinsic
evidence to support the argued contentions. Appellant’s representative was
queried at the oral hearing whether Appellant had submitted any evidence to
support the argued contentions. Appellant’s representative stated that no
extrinsic evidence had been filed in the prosecution and there was no or little
evidence submitted to us and no expert opinions were before us as well.
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