The appellant lost on obviousness at PTAB in Ex parte Jani
The matter of overlapping ranges:
overlapping ranges renders the claimed amount prima facie obvious is
reasonable (e.g., Ans. 3; no Reply Brief has been filed).
Cf. In re Harris,409 F.3d 1339, 1341 (Fed.
Cir. 2005) (quotingIn re Peterson, 315 F.3d 1325,
1329-30 (Fed. Cir. 2003))
Of no patentable significance
In re Huai-Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir.
2011) (“Maloney's express teachings render the claimed
controlled release oxymorphone formulation
obvious, and the claimed ‘food effect’ adds nothing of patentable
see also Ex parte Obiaya
, 227 USPQ 58, 60 (BPAI 1985).
Of result-effective parameters:
It is well settled that, generally speaking, it
would have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for
result-effective parameters. These
cases have consistently held that
the Appellants must show that the
particular range is critical, generally
by showing that the claimed range
achieves unexpected results relative to the prior art range.
See e.g.,In rePeterson
, 315 F.3d at 1329;
In re Woodruff
, 919 F.2d 1575, 1578 (Fed. Cir.
1990). The burden rests with Appellant
s to establish (1) that the alleged
unexpected results presented as being a
ssociated with the claimed invention
are, in fact, unexpected, (2) that the co
mparisons are to the disclosure of the
closest prior art, and (3) that the
supplied evidentiary showing is
commensurate in scope with the claimed subject matter.
See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).