Appeal No. 95-3849
Application 08/029,549
We disagree with the examiner's position (FR4; EA5) that
the dimensional limitations are not a basis for patentability
because applicants have not shown the chosen dimensions to be
critical. Appellants provide several pages of discussion in
the specification along with numerous graphs that show the
criticality of the claimed dimensions and relationships at
various humidity conditions (specification, pages 34-40). The
dimensions and relationships cannot be ignored.
We disagree with the examiner's conclusion that one
having ordinary skill in the art would have been motivated to
modify the guide member of Tollefson to have a pitch x in the
claimed range of 0.050 mm # x # (329*) mm with a crest0.25
height * within the claimed range of 0.2 µm to 3.0 µm as
taught by Kuroda "in order to reduce the contact friction
between the guide member and the magnetic tape" (FR4, EA5).
"[D]iscovery 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 272, 276, 205 USPQ 215, 219
(CCPA 1980). In this case, however, there is no evidence that
pitch was a known result effective variable that could be
experimented with to reduce contact friction. Kuroda
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