Jani case at PTAB involves overlapping ranges, result-effective parameters

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

consequence.”);

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).