1 (4) Each of Appellants’ claimed physical structural elements is
2 found in Mahendran.
3 (5) While some those physical structural elements, such as the
4 outside diameter of the braided support and the porous substance wall
5 thickness, do not have the same precise dimensions, the dimensions overlap.
6 (6) No credible evidence has been relied on in an attempt to
7 show that the use of Appellants’ separation membrane achieves a result not
8 obtained with the use of the separation membrane of Mahendran.
9 Appellants argue that Mahendran “says nothing about the air
10 permeability of any support.” Reply Brief, page 2.
11 However, Appellants have not called our attention to any credible
12 evidence that the air permeability of Mahendran is in any way unexpectedly
13 different from that of the claimed separation membranes. On this record, for
14 all we know, Appellants have found the optimal embodiment within the
15 ranges described by Mahendran—ranges which Mahendran tells one skilled
16 in the art are appropriate. See Pfizer, supra.
17 In light of binding Federal Circuit and CCPA precedent mentioned
18 above, we believe the Examiner had a reasonable basis for asking Appellants
19 to show that the claimed separation membranes do not possess the
20 characteristics of the separation membranes described by the Mahendran
21 prior art reference, especially the characteristics set out in claims 8-9 and 22.
22 See, e.g., Examiner’s Answer, page 7.
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