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Ex parte STEFANO BIAGINI et al. - Page 5
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Board of Patent Appeals and Interferences > 1997 > Ex parte STEFANO BIAGINI et al. - Page 5
Appeal No. 96-0821
Application 07/973,870
See the Examiner's Answer, page 6, first full paragraph.
However, while it may ordinarily be the case that the
determination of optimum values for the parameters of a prior art
process would have been prima facie obvious, that conclusion
depends on what the prior art discloses with respect to those
parameters. Where, as here, the prior art disclosure suggests
the outer limits of the range of suitable values, and that the
optimum resides within that range, the determination of optimum
values outside that range may not be obvious. We think it is not
on the facts of this case, where appellants' "50% to 80% by
weight of silica fume" is well above the relatively small
concentrations of silica fume dust disclosed by Styron. See In
re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972). For
these reasons, we do not sustain the rejection of claims 12
through 22 under 35 U.S.C. § 103 as unpatentable over Styron.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
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Last modified: November 3, 2007
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