Appeal 2007-0128
Reexamination Control 90/006,208
Patent 5,573,648
that encompasses Atwood’s claimed .17 mm. (Grot, col. 12, ll. 38-39).7
The Federal Circuit has provided the following guidance regarding a prior
art range that encompasses a claimed range:
We therefore conclude that a prior art reference that discloses a range
encompassing a somewhat narrower claimed range is sufficient to establish a
prima facie case of obviousness. That is not to say that the claimed
composition having a narrower range is unpatentable. Rather, the existence
of overlapping or encompassing ranges shifts the burden to the applicant to
show that his invention would not have been obvious, as we discuss below.
In re Peterson, 315 F.3d 1325, 1331, 65 USPQ2d 1379, 1383-84 (Fed. Cir. 2003).
The claimed dimensions are encompassed by the prior art teachings, i.e.,
0.17 mm falls within the range of 0.025 to 0.175 mm. Based upon the evidence of
record, we conclude that the prior arts disclosure of a membrane range
encompassing Atwood’s claimed membrane dimensions is sufficient to establish a
prima facie case of obviousness as to the membrane size.
As to the dimensions of the electrodes, Dempsey exemplifies an electrode
having 16 mm as opposed to Atwood’s claimed 10 mm. (Dempsey, Example 4,
col. 11, ll. 65-67). The Examiner states that one of ordinary skill in the art would
use smaller electrodes in Dempsey in order to make for a more compact design so
as to reduce costs associated with the noble metals, e.g., platinum, that are
employed in the electrodes. (Answer, p. 6). Atwood disagrees.
7 Note, Vanderborgh teaches that typical ion exchange membranes in fuel cells
have a thickness of 0.002 to 0.012 inches, i.e., 0.05 mm to 0.3 mm. (Id. at col. 2,
ll. 51-56).
47
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