Appeal 2007-1945
Application 10/669,215
art, the examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”).
2(A). PRIMA FACIE CASE
PRIMA FACIE OBVIOUSNESS BASED ON SUBLETT, WITH OR
WITHOUT SMALL, SMITH, AND HAMILTON
To the extent that the claims in question are interpreted as excluding
the presence of greater than 30 ppm titanium in the claimed thermoplastic
composition, we determine that Sublett’s recognition of applicability of 10
to 100 ppm titanium (in the form of a titanium-containing catalyst) in
forming a polyester used in its blend at least establishes a prima facie case of
obviousness. As stated in In re Peterson, 315 F.3d 1325, 1329, 65 USPQ2d
1379, 1382 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of obviousness.
E.g., In re Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936-37
(concluding that a claimed invention was rendered obvious by a
prior art reference whose disclosed range (“about 1-5%” carbon
monoxide) abutted the claimed range (“more than 5% to about
25%” carbon monoxide)); In re Malagari, 499 F.2d at 1303,
182 USPQ at 553 (concluding that a claimed invention was
rendered prima facie obvious by a prior art reference whose
disclosed range (0.020-0.035% carbon) overlapped the claimed
range (0.030-0.070% carbon)); See also In re Geisler, 116 F.3d
at 1469, 43 USPQ2d at 1365 (acknowledging that a claimed
invention was rendered prima facie obvious by a prior art
reference whose disclosed range (50-100 Angstroms)
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