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 7Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 NextLast modified: November 3, 2007