Appeal No. 95-2179
Application No. 07/994,536
(about 40 percent by weight of blended glycerin polyacrylate
clathrate recited in claim 1; about 40 percent by weight of
blended glycerin polyacrylate recited in claim 7; and 40
percent by weight of blended glycerin
polyacrylate clathrate recited in claim 12). In this appeal,
the
examiner has not accounted for that difference and cannot do
so merely by referring to "optimization." The examiner has
not established that the cited prior art provides guidelines
or direction which would have led a person having ordinary
skill to the claimed subject matter, including the amount of
blended glycerin polyacrylate clathrate or blended glycerin
polyacrylate. For this reason too, we reverse the rejection
under 35 U.S.C. § 103. Cf. In re Sebek, 465 F.2d 904, 907,
175 USPQ 93, 95 (CCPA 1972) (while it may ordinarily be the
case that the determination of optimum values for the
parameters of a prior art process would be at least prima
facie obvious, that conclusion depends on what the prior art
discloses with respect to those parameters. Where the prior
art disclosure suggests the outer limits of the range of
suitable values, and that the optimum resides within that
-5-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007