Appeal 2007-0061
Application 09/531,978
modification was within the capabilities of one skilled in the art, unless the
claimed ranges "produce a new and unexpected result which is different in
kind and not merely in degree from the results of the prior art." quoting
Aller, 220 F.2d at 456, 105 USPQ at 235 and citing In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed.Cir.1990)). Appellants do not
here rely upon any convincing showing of secondary considerations.
Appellants contend that the examples of Nagura teach away from the
claimed parameters. We do not agree because the examples are just that,
examples, and there is a broader teaching of the general conditions within
the reference. See Aller, 220 F.2d at 456, 105 USPQ at 235 (“where the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
Disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3,
169 USPQ 423, 426 n.3 (CCPA 1971).
A preponderance of the evidence supports the Examiner’s
determination that the magnitude of biaxial orientation was a matter of
routine optimization of a known variable in the artificial paper and label art,
the result being predictable and therefore obvious to one of ordinary skill in
the art at the time of the invention.
B. The Rejection of Claims 60 and 82 under § 103(a)
With respect to the rejection of claim 60, Appellants further contend
that the Examiner’s interpretation of Nagura with regard to the level of filler
is incorrect (Br. 16). The Examiner finds that the absence of fillers from the
base film 1 of Nagura is within the ordinary skill in the art (Answer 5). The
issue is: Would it be within the skill of the ordinary artisan to remove the
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