Appeal 2007-0835
Application 09/950,778
Moreover, Van Landeghem suggests roughening to a level of between
10 and 60 microns, a range touching Appellant’s claimed range of 2-10
microns for the same purpose of preventing stickiness. One of ordinary skill
in the art would have expected to obtain the desired air pocket elimination
and anti-stickiness at a roughness of 10 microns, a roughness encompassed
by Appellant’s claim 1. A claimed invention can be rendered prima facie
obvious by a prior art reference that discloses a range that touches the range
recited in the claim. In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362,
1365 (Fed. Cir. 1997)(citing In re Malagari, 499 F.2d 1297, 1303,
182 USPQ 549, 553 (CCPA 1974)). In fact, Appellant’s own discussion of
the prior art, particularly the discussion of EP-A 0 510 754 (Specification
3:25 to 4:4), indicates that it was known in the art to roughen the surface.
Furthermore, where as here the prior art acknowledges that the
variable has effects, e.g., the effect of air flow by roughening, there is
motivation to conduct routine experimentation to optimize those effects to
get the expected benefits, i.e., elimination of air pockets and stickiness. It is
true that a routine variable change sometimes causes an unexpected effect.
In such a situation, the claimed subject matter will be unobvious under the
law if Appellant presents a showing of criticality of the range for unexpected
beneficial results. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980). Note also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F.2d 454, 456, 105
USPQ 233, 235 (CCPA 1955). Appellant presents no convincing evidence
of unexpected results on this record.
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