NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE RAJEN M. PATEL, GERT CLAASEN, 

WENBIN LIANG, KARIN KATZER, KENNETH B. 

STEWART, THOMAS ALLGEUER,

AND JESUS NIETO

______________________ 

2013-1301

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Serial No. 

11/578,646.

______________________ 

Decided: July 16, 2014

______________________ 

JAMES T. HOPPE, The Dow Chemical Company, Intellectual Property Law, of Freeport, Texas, argued for 

appellants. With him on the brief was RAY ASHBURG. 

COKE MORGAN STEWART, Associate Solicitor, Office of

the Solicitor, United States Patent and Trademark Office, 

of Alexandria, Virginia, argued for appellee. With her on 

the brief were NATHAN K. KELLEY, Solicitor, and JAMIE L.

SIMPSON, Associate Solicitor.

______________________ 
2 IN RE PATEL

Before O’MALLEY and HUGHES, Circuit Judges.*

O’MALLEY, Circuit Judge. 

Applicants appeal from a Patent Trial and Appeal 

Board (“PTAB”) decision affirming the patent examiner’s 

rejection of claims 1–8, 30–38, 40–46, 49, and 50 of Patent 

Application No. 11/578,646 as obvious under 35 U.S.C. 

§ 103. Because the PTAB erred in finding that the examiner established a prima facie case of obviousness for 

independent claims 1 and 36, we vacate-in-part and 

remand the PTAB’s decision regarding those claims and 

their dependent claims 2–8, 30–35, 38, 40–43, 45, 46, 49, 

and 50. We also affirm-in-part the PTAB’s decision 

affirming the examiner’s obviousness rejection for claims 

37 and 44. 

BACKGROUND

On October 13, 2006, Appellants filed Patent Application No. 11/578,646 relating to nonwoven material comprised of monocomponent fibers, bicomponent fibers, or 

mixtures thereof. The claims at issue are directed to a 

nonwoven fabric made from the combination of two different components. 

Representative independent claim 11 states:

1. A nonwoven material comprised of fibers having a surface comprising a polyethylene blend, 

said fibers being selected from the group consist-

* Randall R. Rader, who retired from the position of 

Circuit Judge on June 30, 2014, did not participate in this 

decision. 

1 Independent claim 37 contains very similar limitations except that it requires the first polymer to comprise 10 to 80 weight percent and a density from 0.921 to 

0.950 g/cm3. J.A. 94.

 
IN RE PATEL 3

ing of monocomponent fibers, bicomponent fibers 

or mixtures thereof, said nonwoven material having a fuzz/abrasion less than or equal to 

0.0214(BW) + 0.2714 mg/cm2 when the material 

comprises monocomponent fibers and said nonwoven material having a fuzz/abrasion less than or 

equal to 0.0071(BW) + 0.4071 mg/cm2 when the 

material consists of bicomponent fibers, wherein 

the fibers are from 0.1 to 50 denier and wherein 

the polymer blend comprises: 

a. from 26 weight percent to 80 weight percent (by 

weight of the polymer blend) of a first polymer

which is a homogeneous ethylene/α-olefin interpolymer having: 

i. a melt index of from about 1 to about 

1000 grams/10 minutes, and 

ii. a density of from 0.915 to 0.950 

grams/centimeter3, and 

b. from 74 to 20 percent by weight of a second polymer which is an ethylene homopolymer or an 

ethylene/α-olefin interpolymer having: 

i. a melt index of from about 1 to about 

1000 grams/10 minutes, and 

ii. a density which is at least 0.01 

grams/centimeter3 greater than the density of the first polymer 

wherein the overall melt index of the polymer 

blend is greater than 18 grams/10 min. 

J.A. 66 (emphases added). The only limitations at issue 

on appeal are the weight percentage and the density 

range of the first polymer emphasized above.

On March 19, 2010, the examiner issued a Final Office Action rejecting claims 1–8, 30–38, 40–46, and 50 
4 IN RE PATEL

under 35 U.S.C. § 103(a) over U.S. Patent No. 6,015,617 

(“Maugans”) and claim 49 under 35 U.S.C. § 103(a) over 

Maugans in view of U.S. Publication No. 2003/0003830 Al 

(“Ouederni”).2 In rejecting the claims, the examiner found

that the density ranges disclosed in Maugans overlapped 

with the claimed range, and that the “Applicant has also 

not shown unexpected results between a density of .920 

and .921 (as set forth in claim 37).” Joint Appendix 

(“J.A.”) 85. The rejection also incorporated previous 

arguments from a July 22, 2009 Office Action, which 

found several of Appellants’ arguments unpersuasive, 

including Appellants’ assertion that their comparative 

data evidences improved abrasion results when using a 

higher density of 0.915 g/cm3. Addressing the weight 

percentage issue, independent claims 1 and 36 listed a 

range of 26 to 80 weight percent of the first polymer. 

While Maugans discloses a range of 0.5 to 25 weight 

percent, the examiner “maintain[ed] that a patently 

distinguishable difference between 25 and 26 weight 

percent does not exist. As such, it is the position of the 

Examiner that . . . it would be obvious to one having 

ordinary skill in the art to vary the amount of the first 

and second polymer in the blend to achieve a desirable

balance of properties.” J.A. 85. Appellants appealed the 

rejection to the PTAB.

On September 28, 2012, the PTAB filed its Decision 

on Appeal affirming the examiner’s § 103 rejections of 

claims 1–8, 30–38, 40–46, 49, and 50.3 J.A. 4. The PTAB 

2 The examiner also indicated that claims 39, 47, 

and 48 would be allowable if rewritten in independent 

form.

3 The PTAB explained that Appellants did not argue the dependent claims separately, so it addressed only 

independent claims 1, 36, and 37. Independent claim 1 is 

representative of the independent claims.

 
IN RE PATEL 5

agreed with the examiner that Maugans discloses the first 

polymer with “a density anywhere from 0.850 to 0.950 

g/cm3.” J.A. 4–5. The PTAB also found that “Appellants 

have not adequately explained why the alleged improvement shown therein is considered significant and unexpected relative to the closest prior art, Maugans.” J.A. 6. 

Specifically, the PTAB explained that Appellants failed to 

show: (1) “why the evidence relied upon is reasonably 

commensurate in the scope with the claims” and (2) “why 

this limited evidence is representative of the scope of

protection sought by the claimed invention covering 

various compositions having densities outside of that 

specified in the Example.” J.A. 6. Regarding weight 

percentage, the PTAB affirmed the examiner’s prima facie 

case of obviousness stating that “[s]ince 25 wt. % and 26 

wt. % are so close in value, a person of ordinary skill in 

the art would have reasonably expected a blend comprising either 25 wt. % or 26 wt. % of the homogeneously

branched component to have the same or similar properties.” J.A. 6.

On November 27, 2012, Appellants filed a Request for 

Rehearing. On December 24, 2012, the PTAB filed its 

Decision on Request for Rehearing declining to change its

decision affirming the examiner’s § 103 rejections.

Appellants timely appealed. This court has jurisdiction under 28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

Whether an invention is obvious under 35 U.S.C. 

§ 103 is a legal conclusion based on underlying findings of

fact. In re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999). 

We review the ultimate determination of obviousness de 

novo, and the PTAB’s underlying factual findings for

substantial evidence. In re Peterson, 315 F.3d 1325, 1328 

(Fed. Cir. 2003).
6 IN RE PATEL

During prosecution, the United States Patent and 

Trademark Office (“PTO”) bears the initial burden of 

establishing a prima facie case of obviousness. In re 

Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005) (citing In re 

Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). If the PTO 

fails to meet this burden, the applicant is entitled to a 

patent. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). 

If the examiner produces sufficient evidence to support a 

prima facie case, however, the burden shifts to the applicant to produce evidence or argument in rebuttal. In re 

Kumar, 418 F.3d at 1366 (citing In re Piasecki, 745 F.2d 

1468, 1475 (Fed. Cir. 1984)). When rebuttal evidence or 

argument is provided, obviousness is then determined on 

the entirety of the evidence. In re Kumar, 418 F.3d at 

1366 (citing Oetiker, 977 F.2d at 1445).

A. Weight Percentage

Appellants argue that the PTAB erred in sustaining 

the examiner’s rejection for claims 1–8, 30–36, and 424

because the examiner failed to establish a prima facie

case of obviousness with respect to the weight percent

amount of the first polymer. Specifically, they assert

that, although the claims require a blend comprising from 

26 to 80 weight percent of the blend of a first polymer, 

Maugans only discloses a first polymer with a blend from 

0.5 to 25 weight percent. Appellants allege that, because 

the prior art reference “recites a range which does not 

overlap, nor abuts with the claimed range,” it is not 

4 Appellants do not argue that the examiner failed 

to present a prima face case of obviousness regarding 

weight percentage for claims 37, 38, 40, 41, 43–46, 49, and 

50. See Appellants’ Br. 13. Unlike independent claim 1, 

independent claim 37 requires 10 to 80 weight percent of 

the first polymer, which overlaps with the 0.5 to 25 

weight percent disclosed in Maugans. Compare J.A. 94, 

with J.A. 182.

 
IN RE PATEL 7

proper support for a prima facie showing of obviousness

with respect to that range. Appellants’ Br. 8. Appellee 

responds that the examiner correctly rejected the claims, 

as one of ordinary skill in the art would have found the 

weight percent obvious because the end points of the 

ranges are so close to each other. 

The key issue is whether the Maugans reference, disclosing a range of 0.5 to 25 weight percent, can establish a 

prima facie case of obviousness over the claimed range of 

26 to 80 weight percent of the first polymer. We agree 

with Appellants that the examiner failed to establish a 

prima facie case of obviousness because the ranges do not 

overlap and the prior art does not teach that a broader 

range would be appropriate. 

In rejecting the claimed weight percent as prima facie 

obvious, the PTAB stated that, “[s]ince 25 wt. % and 26 

wt. % are so close in value, a person of ordinary skill in 

the art would have reasonably expected a blend comprising either 25 wt. % or 26 wt. % of the homogeneously 

branched component to have the same or similar properties.” J.A. 6. In support of this proposition, the PTAB 

relied on three cases: (1) In re Woodruff, 919 F.2d 1575 

(Fed. Cir. 1990), (2) Titanium Metals Corp. of America v. 

Banner, 778 F.2d 775 (Fed. Cir. 1985), and (3) In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003). See J.A. 6–7. Each of 

these cases is distinguishable from the circumstances 

here. In In re Woodruff, this court affirmed an obviousness rejection by the Board of Patent Appeals and Interferences (“BPAI”) for a process for inhibiting the growth of 

fungi. 919 F.2d at 1575. The process discussed maintaining a modified gaseous atmosphere at specific percentages 

by volume. Id. at 1575–76. While the majority of the 

ranges were clearly found in the prior art, the prior art 

reference disclosed “about 1-5%” carbon monoxide whereas the claim limitation required “>5-25%” carbon monoxide. Id. at 1576. The court found that the prior art range 

and the claimed range overlapped because the statement 
8 IN RE PATEL

“about 1-5% does allow for concentrations slightly above 

5%,” which established a prima facie case of obviousness. 

Id. at 1577 (emphasis added). Consequently, the court in 

In re Woodruff only addressed a prima facie case of obviousness for ranges that overlap. In re Woodruff says 

nothing about a situation where no overlap in ranges 

exists. 

In Titanium Metals, claim 3 disclosed an alloy having 

0.3% Molybdenum (“Mo”) and 0.8% Nickel (“Ni”). The 

court found that claim obvious over prior art which disclosed two alloys having the following characteristics: (1) 

0.25% Mo with 0.75% Ni, and (2) 0.31% Mo with 0.94% 

Ni. Titanium Metals, 778 F.2d at 782–83. While it is true 

that, in finding the claim obvious, the court stated that 

“[t]he proportions are so close that prima facie one skilled 

in the art would have expected them to have the same 

properties,” id. at 783, the facts of the case put that 

comment in context. The claims and prior art in Titanium Metals disclosed single points, not ranges, and the 

claimed amount fell within the two single amounts disclosed by the prior art. In other words, the prior art 

establishes two measures—which were themselves not far 

apart—and the claim simply adopted a measure between 

those end points. Titanium Metals is thus a case much 

like the range cases where the claimed amount falls 

directly within the established prior art range. Here, 

unlike in Titanium Metals, the claimed range unquestionably falls outside the range disclosed by the prior art.

In In re Peterson, the Court affirmed the finding of 

obviousness regarding the composition of a nickel-based 

single-crystal superalloy. 315 F.3d at 1327. The prior art 

disclosed ranges that either fully or at least partially

overlapped with the claimed ranges. It is well-established 

that a prima facie case of obviousness exists when the

claimed and prior art ranges overlap. See id. at 1329. 

While the court in In re Peterson cited the proposition 

from Titanium Metals that “a prima facie case of obvious-
IN RE PATEL 9

ness exists when the claimed range and the prior art 

range do not overlap but are close enough such that one 

skilled in the art would have expected them to have the 

same properties,” id. at 1329 (citing Titanium Metals, 778 

F.2d at 783) (emphasis omitted), that statement was 

dicta; all of the ranges in In re Peterson overlapped at 

least to some degree. 

While a rejection based on ranges approaching each 

other might well be appropriate where there is a teaching 

in the prior art that the end points of the prior art range 

are approximate, or can be flexibly applied, the PTAB 

cites to no such evidence. And, Appellees are not able to 

cite to any evidence of such a teaching before us. Indeed, 

if anything, Maugans emphasizes limiting the amount of 

the first polymer, as increasing such amount negatively

affects the spinnability and fabric strength. See Maugans 

at col. 12 ll. 47–58 (“fabrics prepared from fibers of the 

invention will exhibit a fabric strength which is at least 5 

percent, more preferably at least 10 percent, and most 

preferably at least 20 percent of fabric prepared from fiber 

prepared form unmodified second polymer” and “fibers of 

the invention will exhibit a spinnability (maximum draw 

rpms) which is no more than 25 percent less than, more 

preferably no more than 15 percent less than the spinnability (maximum draw rpms) of fiber prepared from 

unmodified second polymer.”).

Depending on the technology, even small differences 

in formulations can be meaningful. Where differences 

clearly exist and there is no evidence that they are either 

not meaningful or one of skill in the art would know to 

discard the limits set by the prior art, proximity alone is 

not enough to establish a prima facie case of obviousness.

We find that the PTAB erred in finding that the examiner established a prima facie case of obviousness 

solely because the claimed range and the prior art range 

approach one another. Consequently, we need not ad-
10 IN RE PATEL

dress whether the Maugans reference affirmatively 

teaches away from the claimed invention.

B. Density

Appellants concede that the examiner established a 

prima facie case of obviousness regarding density as the 

claimed range of 0.915–0.950 g/cm3 falls within the prior 

art range of 0.855–0.950 g/cm3.5 Appellants’ Br. 19. As 

a result, the primary point of contention is whether 

Appellants provided sufficient evidence of unexpected 

results to support a finding of non-obviousness over the 

prior art. We find that substantial evidence supports the 

PTAB’s finding that Appellants failed to satisfy their 

burden to show unexpected results for the claimed range. 

Whether an invention has produced unexpected results is a question of fact reviewed for substantial evidence. In re Peterson, 315 F.3d at 1328. “When an 

applicant seeks to overcome a prima facie case of obviousness by showing improved performance in a range that is 

within or overlaps with a range disclosed in the prior art, 

the applicant must ‘show that the [claimed] range is 

critical, generally by showing that the claimed range 

achieves unexpected results relative to the prior art 

range.” In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 

1997) (quoting In re Woodruff, 919 F.2d at 1578). Evidence of unexpected results must be commensurate with 

the scope of the rejected claims. See In re Peterson, 315 

F.3d at 1329 (“the applicant’s showing must be commensurate in scope with the claimed range”); In re Clemens, 

622 F.2d 1029, 1035 (CCPA 1980) (“In order to establish 

unexpected results for a claimed invention, objective 

evidence of non-obviousness must be commensurate in 

5 Independent claim 37 requires a density of 0.921 

to 0.950 g/cm3, which also falls within the prior art range. 

See J.A. 94.

 
IN RE PATEL 11

scope with the claims which the evidence is offered to 

support.”). 

In support of its assertions of unexpected results, Appellants point to Examples 11 and 17 in the application. 

Example 17 uses Resin C, which has a density of 0.913 

g/cm3. Example 11 uses Resin E, which has a density of 

0.915 g/cm3. Example 17 also differs from Example 11 in 

that it contains 5 percent more of the first polymer. 

Appellants address this difference by stating that “[the 

first polymer] component would be expected to benefit 

abrasion performance . . . , so all things being equal, the 

additional 5% of the homogeneously branched component 

should improve abrasion performance.” Appellants’ Br. 

20. They then allege that, “[d]espite this disadvantage, 

Example 11 shows a 0.076 mg (>15%) improvement in the 

Abrasion performance over Comparative Example 17.” 

Appellants’ Br. 20. 

Despite these explanations, the PTAB found that 

“Appellants have not adequately explained why the 

alleged improvement shown therein is considered significant and unexpected relative to the closest prior art, 

Maugans.” J.A. 6. We agree, and find that Appellants’ 

reliance on the 15 percent improvement in the abrasion 

performance does not reach the level of unexpected results to overcome the finding of obviousness, even with 

the alleged disadvantage. See In re Geisler, 116 F.3d at 

1470–71 (finding a 26 percent improvement in wear 

resistance insufficient to constitute proof of “substantially 

improved results”); In re Soni, 54 F.3d 746, 751 (Fed. Cir. 

1995) (finding “substantially improved results” to overcome obviousness when the 50-fold improvement in 

tensile strength was much greater than would have been 

predicted). Furthermore, whether an applicant has 

shown unexpected results is a question of fact on which 

we defer to the PTAB. Therefore, we conclude that substantial evidence supports the PTAB’s finding that Appellants failed to show unexpected results.
12 IN RE PATEL

Even if the single point of 0.915 g/cm3 exhibited unexpected results, Appellants did not disclose sufficient

evidence of unexpected results over the entire claimed 

range. See In re Peterson, 315 F.3d at 1330; In re Geisler, 

116 F.3d at 1469–70. As such, Appellants cannot rely on 

a single point within a large range to prove unexpected 

results for the entire range.6 Based on the differences 

between the examples for 0.913 and 0.915 g/cm3, Appellants assert that higher densities “would be expected to 

lead to an even more pronounced advantage with regards 

to abrasion resistance properties.” Appellants’ Br. 20 

(emphasis added). While Appellants allege that the 

advantages at the higher densities would be expected to be 

more pronounced, Appellants did not establish unexpected results through factual evidence for the entire 

claimed range. See In re Geisler, 116 F.3d at 1470 (requiring unexpected results for the claimed range to be established by factual evidence). Appellants’ conclusory 

statement is insufficient without further supporting 

factual evidence. 

Finally, Appellants assert that they did not need to 

show unexpected results for the entire range. We disagree. Appellants do not seek to claim only a single point 

that happens to fall in a prior art range; they claim a 

range. This court has stated that, for an applicant to 

overcome a prima facie case of obviousness through 

unexpected results in a range that overlaps with a range 

disclosed in the prior art, the applicant must “show that 

the [claimed] range is critical, generally by showing that 

the claimed range achieves unexpected results relative to 

the prior art range.” In re Woodruff, 919 F.2d at 1578; see 

6 Appellants did not provide even a single point exhibiting unexpected results for the range listed in independent claim 37, which requires a density of 0.921 to 

0.950 g/cm3. See J.A. 94.

 
IN RE PATEL 13

also In re Geisler, 116 F.3d at 1469–70. In a prima facie 

case of obviousness, the burden shifts to the applicant to 

overcome the examiner’s initial rejection. See In re Kumar, 418 F.3d at 1366. If Appellants want to claim a 

range, they need to show unexpected results for the entire 

claimed range, here of 0.915 g/cm3 to 0.950 g/cm3, to 

overcome the prima facie case of obviousness established 

by the examiner. Therefore, substantial evidence supports the PTAB’s finding that Appellants failed to provide 

sufficient evidence of unexpected results to overcome the 

obviousness rejection. 

CONCLUSION

For the abovementioned reasons, we affirm-in-part 

the PTAB’s decision affirming the examiner’s obviousness 

rejection for claims 37 and 44. We also find that, in the 

absence of a prima facie case of obviousness regarding the 

weight percent amount, the PTAB erred in affirming the 

examiner’s rejection under 35 U.S.C. § 103 for independent claims 1 and 36. Consequently, we vacate-in-part the 

PTAB’s decision for claims 1–8, 30–36, 38, 40–43, 45, 46, 

49, and 50, and remand for further proceedings. 

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED