Appeal No. 2007-1530
Application 10/095,112
Appellants argue that the Examiner’s reliance on Boesch is misplaced
because “Pyzik merely discloses a composite material that is 70 to 96 volume %,
and preferably 85 to 96 volume % ceramic. Pyzik provides no motivation or
suggestion to lower this amount” (Br. 6). This argument is not responsive to the
Examiner’s position, which is that it would have been prima facie obvious to
experimentally determine which volume percentages of ceramic yield a composite
material that is suitable for use as an electrically conductive connector housing.
In general, an applicant may overcome a prima facie case of obviousness by
establishing that the claimed range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range. In re
Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1383 (Fed. Cir. 2003) (citing
Geisler, 116 F.3d at 1469-70, 43 USPQ2d at 1365). A showing of unexpected
results must be commensurate in scope with the claimed range. Peterson, 315 F.3d
at 1330-31, 65 USPQ2d at 1383 (citing In re Greenfield, 571 F.2d 1185, 1189,
197 USPQ 227, 230 (CCPA 1978)). Moreover, when unexpected results are
offered as evidence of nonobviousness, the results must be shown to have been
unexpected in comparison with the results obtained when using the closest prior
art. Abbott Labs. v. Andrx Pharms., Inc., 452 F.3d 1331, 1345, 79 USPQ2d 1321,
1332 (Fed. Cir. 2006). Appellants have provided no such evidence. As already
noted, they do not characterize the test results in the Evidence Appendix as being
unexpected. Nor have they established that those test results are commensurate in
scope with the range recited in claim 2. Also, those test results compare the
properties of Appellant’s composite material to the properties of an unidentified
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