Appeal No. 95-2227
Application No. 08/048,964
Therefore, we are left with only the single issue as to whether the showing of
unexpected results is sufficient to overcome the rejections of the claims under 35 U.S.C. §
103.
Having conceded the prima facie case of obviousness over Rosinski alone or in
combination with Young, appellants have accepted that it would be within the purview of
the skilled artisan to optimize all parameters disclosed in the reference. In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) and cases cited therein. There
appears to be no dispute that one practicing claim 1 would be operating within the 4-
corners of Rosinski. We note that Rosinski additionally explains the goal of optimizing the
amounts of C3 and C4 olefins (Rosinski, col. 1, lines 19-21) which is also emphasized by
appellants (Specification, page 31, lines 36-39).
It is well settled that a prima facie case of obviousness may be rebutted "where the
results of optimizing a variable, which was known to be result effective, [are] unexpectedly
good." In re Boesch, supra; In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8-9 (CCPA
1977).
Appellants appear to rely on the graphic presentation of data which is attached to
the declaration of Dr. Adewuyi filed March 19, 1993. The graph is said to compare the
propylene production using the claimed process with the propylene production resulting
from the processes disclosed by the examples of Rosinski. The only evidence specifically
relied upon is from the graph. We note that there are 4 declarations, as well as the
specification, relating to the comparison of the claimed process with the process
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