Appeal No. 2007-0055 Page 14 Application No. 10/053,299 Examiner. Answer 21. Appellants have not provided persuasive arguments to the contrary. The rejection of claim 1 under � 103(a) is affirmed, but subject to a new ground of rejection under 37 CFR � 41.50(b) based on a claim interpretation that is different from the Examiner’s. Claims 5-10, 41, 42, and 43 fall with claim 1 since they were not separately argued. Claims 2, 3, and 4 Claims 2-4 recite ranges of isoleucine per cm2 of eukaryotic cell surface. The Examiner states that the claim ranges overlap with the ranges described by Zeng. However, the Examiner argues that “it would have been deemed obvious to one of ordinary skill in the art at the time the invention was made to determine suitable ranges or amounts . . . through the use of routine or manipulative experimentation to obtain the best possible results, as these are variable parameters within the art.” Answer, pages 15-16. We agree with Appellants that the Examiner has not established a prima facie case of unpatentability for these claims. Although an overlap in ranges establishes prima facie obviousness, an exception has been recognized where a parameter had not been recognized as being a “result-effective variable.” In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8-9 (CCPA 1977). Concentration is identified by Zeng as a results- effective variable for reducing vaginal acidity, but the Examiner has not provided sufficient evidence that, in optimizing the ranges for this activity, the microbial blocking activity would also be realized. This problem is further compounded because we canPage: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
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