Appeal No. 2007-1227 Page 5
Application No. 10/416,211
§ 41.37(c)(1)(vii) (July 2006). Since the claims stand or fall together we select
claim 1 as representative of the group. Claim 3 will stand or fall together with
claim 1.
The examiner relies on Winters as set forth above. Answer, page 6.
According to the examiner (id.),
[w]ith respect to the encompassing . . . ranges previously
discussed, the subject matter as a whole would have been obvious
to one of ordinary skill in the art at the time of invention to select the
portion of the prior art’s range which is within the range of the
[a]ppellants’ claims because it has been held prima facie . . .
[obvious] to select a value in a known range by optimization for the
results.
We agree.
Effective volumes and concentrations are result effective variables, and it
would have been obvious to optimize those parameters as a matter of routine
experimentation. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 235
(CCPA 1980) (noting that the determination of the optimum values of result
effective variables is ordinarily within the skill of the art); see also In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (“where 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.”).
Accordingly, we disagree with appellants’ intimation (Brief, page 23) that a
person of ordinary skill in the art would not have been motivated to optimize the
concentration of chloride ions in the reaction mixture. We are also not persuaded
by appellants’ assertions regarding the “foaming problem of the prior art.” As set
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