Appeal No. 96-0251
Application 07/874,697
Appellants argue (brief, pages 8-9) that Lucisano merely
states the problem and makes appellants’ claimed method
“obvious to try” as that term is discussed in O’Farrell, 853
F.2d at 903, 7 USPQ2d at 1681. In that case, as pointed out
by appellants (brief, page 9), the court stated that in
previous cases, the court’s admonition that “obvious to try”
is not the standard for obviousness was directed toward two
kinds of error. See id. “In some cases, what would have been
‘obvious to try’ would have been to vary all parameters or try
each of numerous possible choices until one possibly arrived
at a successful result, where the prior art gave either no
indication of which parameters were critical or no direction
as to which of many possible choices is likely to be
successful.” See id. In the present case, as discussed
above, Lucisano would have indicated to one of ordinary skill
in the art that electrode shielding is desirable and that
using electrode shielding is likely to be successful. In the
other cases referred to by the court in O’Farrell, “what was
‘obvious to try’ was to explore a new technology or general
approach that seemed to be a promising field of
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