Appeal No. 96-1087
Application 08/068,700
electrode would be "determined as a design expedient to achieve optimal spark plug
efficiency." (Answer at page 5, paragraph 2). Appellants have argued that the recited
ranges and relationship of the length, diameter and thickness as claimed are not taught nor
suggested by the references. (See brief at page 10-12, paragraph 1). We agree. The
Examiner has not provided any suggestion or line of reasoning as to how the claimed
ranges of value would have been derived by the skilled artisan. We find that the examiner
has provided merely a motivation to experiment using an impermissible "obvious to try"
standard rather than providing a motivation for the skilled artisan to arrive at the claimed
invention. In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 379 (Fed. Cir.
1986). "[O]bvious to try is not the standard of 35 U.S.C. § 103." In re Antonie, 559 F.2d
618, 620, 195 USPQ 6, 8 (CCPA 1977) (emphasis omitted). Rather, the test is whether
the references, taken as a whole, would have suggested appellant's invention to one of
ordinary skill in the art at the time the invention was made. See In re Simon, 461 F.2d
1387, 1390, 174 USPQ 114, 116 (CCPA 1972).
Furthermore, appellants have argued that Takamura does not disclose a value of L
within the claimed range. (See brief at page 12, paragraph 3.) The Examiner has stated
the "from a cursory review of Fig. 6, it is clear that the length L of the narrowed
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