Appeal No. 1998-1746
Application No. 08/427,462
In our view, these teachings provide clear motivation to those
of ordinary skill in the art to deliberately introduce
irregularities (indentations or scratches) at desired
locations on a surface in order to promote cone formation.
Determination of an optimum value of a recognized result-
effective variable, here "surface roughness," is prima facie
within the realm of ordinary skill absent a showing of any new
or unexpected result. See In re Boesch, 617 F.2d 272, 276,
205 USPQ 215, 219 (CCPA 1980).
With regard to the argument concerning "uniformity" of
the sites or areas in which it is desired to form micro-tips,
appellants have failed to demonstrate that the "uniformity"
required by claim 1 is any different than, let alone
patentably distinct from, the uniformity which can be achieved
by using
a diamond scriber as in Wehner to produce scratches or
indentations. In this regard, we note that appellants may
also use a similar implement, i.e., "a fine needle," to
produce irregularities by scratching a surface (specification:
p. 11, l. 19-22; claim 7). It is appellants' burden to
establish that the claimed feature or characteristic, i.e.,
7
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