Appeal 2007-0159
Application 10/850,019
With respect to the Examiner’s rejections under 35 U.S.C. § 103,
Appellants additionally argue that the Examiner has failed to show that it
would have been obvious to have used a batch or semi-batch process. As
pointed out by the Examiner, it is generally considered obvious to one of
ordinary skill in the art to convert a batch process to continuous operation
and vice versa. (Answer 9-10). See In re Korpi, 160 F.2d 564, 566, 73
USPQ 229, 230 (CCPA 1947). Appellants have not provided any evidence
of unexpected results in the use of a batch or semi-batch process as
compared with the relied-upon prior art continuous processes. In fact,
Appellants’ own Specification teaches that the polymerization process of the
invention may be a continuous process. (Specification 2).
Appellants also contend that the prior art teaches away from their
invention because some of the working examples utilize reaction
temperatures which are outside of Appellants’ claimed range. See (Br. 4 and
9). This argument is also unpersuasive, since a reference is relevant for all
that it fairly teaches and not only for what is indicated as preferred. In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Moreover,
a prima facie case of obviousness exists where the prior art and claimed
ranges overlap, as well as in those cases where the claimed range and the
prior art range, though not overlapping, are sufficiently close that one skilled
in the art would have expected them to have the same properties. See, e.g.,
In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997)
(acknowledging that a claimed invention was rendered prima facie obvious
by a prior art reference whose disclosed range (50-100 Angstroms)
overlapped the claimed range (100-600 Angstroms)); In re Woodruff, 919
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