Appeal No. 2006-0139
Application No. 09/583,228
closest prior art.''). For the reasons indicated above, we do not find the results put forth
in the Declaration of Seth to be comparative.
Furthermore, Morella discloses that the dissolution profile of a drug is a result
effective variable dependent upon the coating thickness and amounts of ingredients in
the coating composition. In In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
1955), a predecessor of our appellate reviewing court set out the rule that the discovery
of an optimum value of a variable in a known process is normally obvious. See also, In
re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Our reviewing court
has found an exception to this general rule where Athe 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). Exceptions to this rule have also been found in cases where
the results of optimizing a variable, which was known to be result effective, were
unexpectedly good. In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA
1974). However, neither of these exceptions to the art recognized principles of
optimization and result effective variables are found in the present case.
In our view, for the reasons indicated herein, we agree that the examiner has
presented a prima facie case of obviousness which has not been convincingly rebutted
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007