Appeal 2007-1205
Application 10/501,343
In obviousness-type double patenting rejections, the analysis and
issues involved correspond to those encountered in § 103(a) obviousness
determinations, albeit the applied claims of the copending application or
patent involved are not required to be prior art to the rejected claims. See In
re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir.1985). In this
regard, it is our view that the use of a slightly lower amount of anionic
surface-active additive than expressly disclosed and embraced by claim l of
the copending application would have been well within the ordinary skill of
an artisan seeking to determine the result effectiveness and workability of
employing differing amounts of this component in the pigment formulation.
When the difference between the claimed invention 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.
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