Appeal 2007-0499
Application 10/515,345
and the prior art is a range or value of a particular variable, then a prima
facie rejection is properly established when the difference in range or value
is minor. Hayes Int’l. Inc. v. Jessup Steel Co., 8 F.3d 1573, 1577 n.3, 28
USPQ2d 1652, 1655 n.3 (Fed. Cir. 1993).
After all, skill and not the converse is expected of an ordinarily skilled
artisan. In re Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir.
1985). Moreover, we are bound to consider the disclosure of each reference
for what it fairly teaches one of ordinary skill in the art, including not only
the specific teachings, but also the inferences which one of ordinary skill in
the art would reasonably have been expected to draw therefrom. See In re
Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966); and In re Preda,
401 F.2d 825, 826-27, 159 USPQ 342, 344 (CCPA 1968). This reasoning
also applies in establishing the obviousness of the representative appealed
claim 1 over claim 1 of the copending application based on the adjacent
ranges at issue in the obviousness-type double patenting rejection here.
Hence, we agree with the Examiner that Appellants’ appealed claims
represent obvious variations of the claims of copending Application No.
10/501,343, which prima facie case has not been persuasively rebutted by
Appellants. Consequently, we affirm the Examiner’s provisional
obviousness-type double patenting rejection, on this record.
OTHER ISSUE
In the event of further prosecution of the subject matter of this
application before the Examiner in this or a continuing application, the
representing an unobvious difference over the claims of the copending
application. Arguments not made in the Briefs are considered to be waived.
See 37 C.F.R. § 41.37(c)(vii) (2006).
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