Appeal No. 2007-0055 Page 10
Application No. 10/053,299
1382 (Fed. Cir. 2003). Having established the existence of overlapping ranges, the
burden shifted to Appellants to show that their invention would not have been obvious.
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.
These cases have consistently held that 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, 1936-37 (Fed. Cir. 1990).
(Internal citations omitted.)
Appellants rely on evidence in the specification to establish “unexpected and
surprising results.” Br. 22-24. “[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with the
closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281,
1285 (Fed. Cir. 1991). Here, the closest prior art is Pederson’s chelate. However,
Appellants base their showing on using isoleucine alone, but do not compare it to
Pederson’s chelate which is the closest prior art. Consequently, we conclude that
Appellants have not provided adequate evidence to rebut the prima facie case. We
affirm this rejection as it applies to claims 11-13. Claims 14-16 and 25 fall with
claim 11 because separate reasons for patentability were not provided.
Because we have relied on arguments not raised previously by the Examiner, we
designate this as a new ground of rejection to provide Appellants a fair opportunity to
respond to it. See 37 C.F.R. § 41.50(b).
Zeng
Claims 1-13, 18, 25, 31, 32, 34, and 41-44 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Zeng.
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