Appeal 2007-1945
Application 10/669,215
overlapped the claimed range (100-600 Angstroms)). We have
also held that a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have
expected them to have the same properties. Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed.
Cir. 1985).
This is especially compelling in this instance since Smith or Hamilton,
as correctly found by the Examiner at page 4 of the Answer, provides an
incentive to employ the lower end of the range described in Sublett.
Specifically, Smith and Hamilton teach that residual titanium catalyst from
the polyester adversely affects polyester/polycarbonate blends in terms of
color and possibly in terms of decreased viscosity. (Smith 4237 and
Hamilton, col. 1, ll. 10-62 and col. 2, ll. 53-64). As a consequence of this
adverse effect on the polyester/polycarbonate blends, Hamilton, for example,
teaches deactivating the residual titanium catalyst therein with a phosphorus-
containing compound (col. 1, ll. 45-56 and col. 2, ll. 15-41).
Given the knowledge of the adverse effect of a titanium based
catalyst, the applicable amounts of a titanium-containing catalyst in
producing a polyester, and the cost involved in employing the catalyst
deactivating phosphorus-containing compound, one of ordinary skill in the
art would have been led to employ the lower end of the applicable amounts
of a titanium-containing catalyst taught by Sublett (10 to 30 ppm titanium),
motivated by a reasonable expectation of successfully reducing the amount
of the phosphorus-containing compound (catalyst deactivating compound)
employed and/or minimizing the adverse effect of the titanium-containing
catalyst. See, e.g., In re Thompson, 547 F.2d 1290, 1294, 192 USPQ 275,
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