34.9% polyethylene

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44. A claim in an application recites “[a] composition containing: (a) 35-55% polypropylene; and (b) 45-65% polyethylene.”

The sole prior art reference describes, as the only relevant disclosure, a composition containing 34.9% polypropylene and

65.1% polyethylene. In accordance with USPTO rules and procedures set forth in the MPEP, the primary examiner should properly:

(A) Indicate the claim allowable over the prior art because there is no teaching, motivation

or suggestion to increase the amount of polypropylene from 34.9% to 35% and decrease the amount

of polyethylene from 65.1% to 65%.

(B) Reject the claim under 35 USC 102 as anticipated by the prior art reference.

(C) Reject the claim under 35 USC 103 as obvious over the prior art reference.

(D) Reject the claim alternatively under 35 USC 102 as anticipated by or under 35 USC 103

as obvious over the prior art reference.

(E) None of the above.

44. ANSWER: (C) is the most correct answer. A prima facie case of obviousness exists where the claimed ranges

and the prior art are close enough that one of ordinary skill in the art would have expected them to have the

same properties. See MPEP § 2144.05. In Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773,

779 (Fed. Cir. 1985), a claim recited a titanium base alloy consisting essentially of 0.8% nickel, 0.3% molybdenum,

up to 0.1% maximum iron, and the balance titanium. A prior art reference described two similar alloys: (i) one

with 0.25% molybdenum, 0.75% nickel, and balance titanium; and (ii) another with 0.31% molybdenum, 0.94% nickel,

and balance titanium. The court held:

As admitted by appellee’s affidavit evidence from James A. Hall, the Russian article discloses two alloys 
having compositions very close to that of claim 3, which is 0.3% Mo and 0.8% Ni, balance titanium. The two 
alloys in the prior art have 0.25% Mo-0.75% Ni and 0.31% Mo-0.94% Ni, respectively. The proportions are so 
close that prima facie one skilled in the art would have expected them to have the same properties. 
Appellee produced no evidence to rebut that prima facie case. The specific alloy of claim 3 must therefore 
be considered to have been obvious from known alloys.

Id. Thus, (A) is incorrect. (B) and (D) are incorrect because a claim is anticipated by a prior art reference

only when the prior art discloses, either expressly or inherently, every limitation of the claimed invention.

(E) is incorrect because (C) is correct.