Ex parte MATSUMOTO et al. - Page 7




          Appeal No. 96-0626                                                          
          Application 08/187,328                                                      


          37 USPQ2d 1237, 1239, citing W. L. Gore & Assocs. v. Garlock,               
          Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.                  
          1983), cert. denied, 469 U.S. 851 (1984).                                   
                    2.  Appellants assert that the Examiner has failed                
          to establish a prima facie case of obviousness to use silicon               
          or diamond-like carbon as an insulator, and to adjust their                 
          electrical resistivity and thermal conductivity ranges (Brief               
          at page 11 et seq.).  The Examiner responds that silicon and                
          diamond-like carbon are per se known insulators, and that                   
          routine experimentation and optimization would result in the                
          claimed ranges since the results(insulation with better heat                
          dissipation) would be expected, and not lead to something                   
          unobvious (Answer at page 6, lines 13-18, and response to                   
          Reply Brief, Paper No. 13, page 5, paragraph 5).                            
                    Appellants do not dispsute that silicon and diamond-              
          like carbon are well known insulators, and we find that                     
          experimentation and optimization will result in the claimed                 
          ranges.  Determining the optimal values of result effective                 
          variables would have been obvious and ordinarily within the                 
          skill of the art.  In re Boesch, 617 F.2d 272, 276, 205 USPQ                
          215, 219 (CCPA 1980).  With regard to the electrical                        

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