Appeal 2007-3191
Application 10/482,217
reasons well stated in the Answer. We do not find Appellant’s arguments
persuasive in overcoming the Examiner’s prima facie showing of
obviousness for the reasons discussed below.
Appellant first argues that although Liao indicates that preferred
polyesters are PET and PBT, the claimed ranges for these components are
narrower than those disclosed in Liao (Br. 7). As noted by our reviewing
court 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” (emphasis omitted). In this case (see
Findings of Fact ), because the “claimed ranges are completely encompassed
by the prior art, the conclusion [that the claims are prima facie obvious] is
even more compelling.” Id., 315 F.3d at 1330, 65 USPQ2d at 1382. See In
re Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954-55 (Fed. Cir.
2005); In re Geisler, 116 F.3d 1465, 1468-69, 43 USPQ2d 1362, 1364 (Fed.
Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990); In re Malagari, 499 F.2d 1297, 1302-03, 182 USPQ 549,
553 (CCPA 1974).
Appellant also argues that Liao’s composition includes components
which are not recited in the appealed claims (Br. 7). However, as correctly
pointed out by the Examiner (Answer 4), Appellant’s claims do not exclude
the presence of additional components.
Appellant further argues that one of ordinary skill in the art would not
have been motivated to select the particular phosphorus containing
stabilizers of the invention from among those listed in Liao (Br. 7). In
general, prima facie obviousness requires that the prior art provide some
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