Appeal No. 96-1950
Application No. 08/099,929
are critical, see In re Woodruff, 919, F.2d 1575, 1578, 16
USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and we consider that
they have done so. The examiner argues that appellants have
merely used routine skill to discover the optimum or workable
range of thicknesses to produce a hose having flexibility,
bendability and endurance to vibrations. However, we do not
believe that appellants’ experimental data can be 5
characterized as the discovery of optimum ranges (In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)), because
there is no teaching in the prior art references (Igarashi
‘906 and Satoh) that the variables here involved, i.e., layer
thickness and thickness ratios, are "known to be result
effective." See In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980). In order for a claimed parameter to be
deemed the result of obvious experimentation, any such
experimentation must have come from within the teachings of
the art. In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290,
5The data in question are those contained in the Rule 132
Declaration of Tsutomu Kodama, filed April 11, 1994 (Paper
No. 7).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007