Appeal no. 1997-3953
Application 08/392,615
While the examiner is correct in that “discovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the art,” In re Boesch,
617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) (citations omitted), our reviewing
court has found an exception to this general rule where “the parameter optimized was not
recognized to be a result effective variable,” In re Antonie, 559 F.2d 618, 621, 195 USPQ
6, 8 (CCPA 1977). Appellants “contend that invention lies in the conception that total
glucose/fructose amount and ratio thereof are parameters which affect amount of cell
density and the time required to reach maximum cell density,” which “[t]he applied
reference does not teach.” In appellant’s view, “[t]here are other potential variables
besides carbohydrate . . . in bacterial growth.” Brief, page 12.
As set forth in In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968), “[a] rejection based on section 103 clearly must
rest on a factual basis” and “[t]he Patent Office has the initial duty of supplying the factual
basis for its rejection.” “It may not, because it may doubt that the invention is patentable,
resort to speculation [or] unfounded assumptions . . . to supply deficiencies in its factual
basis.” Despite the examiner’s explicit statement above, we are unable to identify any
factual basis for the assertion that “[i]t has been clearly established in the prosecution of
this case that . . . the various proportions and amounts of the ingredients used in the
claimed composition, i.e. fructose/glucose” were recognized as “result effective variables”
at the time of the invention.
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