Appeal No. 96-2630
Application No. 08/259,824
Percent Void Area] and GMT [geometric mean tensile strength]
values” (answer, page 6). As indicated above, the discovery of
an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art. In re Boesch,
617 F.2d at 276, 205 USPQ at 219. Such is not the case, however,
where the parameter optimized would not have been recognized to
be a result effective variable. In re Antonie, 559 F.2d 618,
620, 195 USPQ 6, 8-9 (CCPA 1977). The examiner has failed to
point out, and it is not apparent, which of the many process
conditions in the respective prior art tissue making methods
disclosed by the applied references would have been appreciated
by the artisan as being result effective variables with respect
to the “Average Percent Void Area” of the tissues being made.
Under these circumstances, the examiner’s conclusion that each of
the applied references would have suggested a tissue sheet having
an Average Percent Void Area as set forth in the appealed claims
cannot stand.
In summary, the decision of the examiner:
a) to reject claims 23 through 30 under 35 U.S.C. § 103 as
being unpatentable over Busker in view of Burgess or Benz is
affirmed, with the affirmance constituting a new ground of
rejection under 37 CFR § 1.196(b); and
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