Appeal 2007-2049
Application 10/475,223
Once the polychloroprene latex formulator of ordinary skill in the art
had the list of known stabilizers in hand, the selection of workable or
optimal combinations of those stabilizers would have been a matter of
routine experimentation. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1368, 82 USPQ2d 1321, 1335-36 (Fed. Cir. 2007) (discovery of an optimum
value of a variable in a known process is usually obvious.) and In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (“[I]t is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
This is the kind of situation that requires Appellants to show secondary
considerations such as unexpected results or criticality to overcome the
prima facie case. See In re Huang, 100 F.3d 135, 139, 40 USPQ2d 1685,
1688 (Fed. Cir. 1996) (“This court and its predecessors have long held,
however, that even though applicant's modification results in great
improvement and utility over the prior art, it may still not be patentable if the
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)).
We cannot say that Appellants have met their burden in showing
unexpected results. Appellants do not provide evidence that the results are
actually unexpected: the Specification refers to the results as “superior” but
does not indicate that the results were seen to be unexpected or
unpredictable. Moreover, some of the claimed combinations do not stabilize
against light as well as some the unclaimed combinations (FF 7). “[A]ny
superior property must be unexpected to be considered as evidence of non-
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