Ex Parte Hirzel - Page 13

                   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.                                          

                                                                13                                                                  

Page:  Previous  6  7  8  9  10  11  12  13  14  15  16  17  18  19  20  Next

Last modified: September 9, 2013