Appeal No. 2007-3827
Application 08/713,905
517 F.2d 947, 950-51, 186 USPQ 80, 82-83 (CCPA 1975) (“Appellants have
chosen to describe their invention in terms of certain physical characteristics
of the roughened substrate surface. . . . Merely choosing to describe their
invention in this manner does not render patentable their method which is
clearly obvious in view of [the reference].” (Citation omitted)); cf. In re
Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990);8
In re Woodruff, 919 F.2d 1575, 1577-78, 16 USPQ2d 1934, 1936-37 (Fed.
Cir. 1990).9
We cannot agree with Appellants’ position that Dr. Stutz’s testimony
is sufficient to establish that one of ordinary skill in this art would not have
had a reasonably expectation of success in converting Lehmann’s ether
diamines to ether diisocyanates via the vapor phase phosgenation methods
to obtain and compare prior art products. [Footnote and citation
omitted.]
Best, 562 F.2d at 1255, 195 USPQ at 433-34.
8 The Board held that the compositions claimed by Spada
“appear to be identical” to those described by Smith. While
Spada criticizes the usage of the word “appear,” we think that it
was reasonable for the PTO to infer that the polymerization by
both Smith and Spada of identical monomers, employing the
same or similar polymerization techniques, would produce
polymers having the identical composition.
Spada, 911 F.2d at 708, 15 USPQ2d at 1657-58.
9 The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. [Citations omitted.] These cases
have consistently held that in such a situation, the applicant
must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range. [Citations omitted.]
Woodruff, 919 F.2d at 1577-78, 16 USPQ2d at 1936-37.
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