Appeal No. 1996-3826
Application 08/222,477
218-19 (CCPA 1980) (“Considering also, that the composition requirements of the claims and the cited
references overlap, we agree with the Solicitor that the prior art would have suggested ‘the kind of
experimentation necessary to achieve the claimed composition, including the proportional balancing
described by appellants’ Nv equation. This accords with the rule that discovery of an optimum value of
a result effective variable in a known process is ordinarily within the skill of the art. [Citations
omitted].”); In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977) (“Where,
as here, the claimed and prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his claimed product. See In re
Ludtke [441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether the rejection is based on “inherency”
under 35 USC § 102, on “prima facie obviousness” under 35 USC § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products
or to obtain and compare prior art products. [Footnote and citation omitted.]”); In re Wertheim, 541
F.2d 257, 271, 191 USPQ 90, 103-04 (CCPA 1976) (“The solids content and foam density ranges
disclosed by Pfluger 1963 overlap those of appellants, and it appears, the Pfluger process using solids
contents and foam densities overlapping those of appellants will produce instant coffee which is
indistinguishable from appellants’ products. . . . That some of the products covered by appellants’
claims may not be disclosed or suggested by Pfluger 1963 is not relevant to patentability, since the
claims embrace other subject matter completely disclosed by Pfluger 1963.”); In re Malagari, 499
F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974) (“The process taught by Gross is similar to that
claimed by appellant, and the claimed range of carbon in the steel used as a starting material touches
that in the ‘typical preferred range’ of the reference.”).
Accordingly, since a prima facie case of obviousness has been established over Kawaai with
respect to the claimed aqueous fuels encompassed by appealed claim 1, we have again evaluated all of
the evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellant’s arguments. See generally, In re Johnson, 747 F.2d 1456,
1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984).
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