Appeal No. 2003-0839 Page 5
Application No. 09/646,339
those skilled in the art could have made products with the recited property “by
routine experimentation,” she has pointed to no evidence that those skilled in the
art would have been motivated to do so. See In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783 (Fed. Cir. 1992): “The mere fact that the prior art may
be modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the
modification.”
The examiner argued that those skilled in the art would have been led to
modify the surface roughness of the prior art products “to determine a suitable
surface roughness to control the rate of release.” Examiner’s Answer, page 4.
Thus, she argued, “one would determine a suitable surface roughness in order to
obtain the desired effect of controlled release.” Id. “[T]he discovery of an
optimum value of a variable in a known process is normally obvious,” but one of
the exceptions to that rule is where the parameter optimized was not recognized
in the prior art as one which would affect the results. See In re Antonie, 559 F.2d
618,620, 195 USPQ 6, 8 (CCPA 1977). Here, the examiner has cited no
evidence to show that those skilled in the art would have recognized a
relationship between surface roughness and rate of release.
“Even when obviousness is based on a single prior art reference, there
must be a showing of a suggestion or motivation to modify the teachings of that
reference.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed.
Cir. 2000). Modifying “prior art references without evidence of such a
suggestion, teaching, or motivation simply takes the inventor’s disclosure as a
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