Appeal No. 2002-2210
Application 09/553,295
our determination that the examiner has failed to establish a
prima facie case of obviousness. The examiner’s conclusion that
it would have been obvious to one of ordinary skill in the art at
the time of appellant’s invention “to have operated the polishing
machine [of Christianson] at the claimed result set forth in the
claim [sic] since it has been held that discovery of optimum
value of result effective variable in known process is ordinary
[sic] within the skill of the art,” is totally without foundation
and appears to be based entirely on hindsight reconstruction.
Thus, we refuse to sustain the examiner’s rejection of
claims 1 through 5, 8 through 16, 18 through 26, 29 through 37,
39 through 42 and 56 under 35 U.S.C. § 103(a) based on
Christianson.
With regard to the examiner’s rejection of claims 6, 7, 17,
27, 28 and 38 under 35 U.S.C. § 103(a) as being unpatentable over
Christianson in view of Howard, we have reviewed the Howard
patent and agree with appellant that there is nothing in the
disclosure this patent which makes up for or otherwise provides
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