Appeal No. 96-3332
Application 08/321,025
We remand this application to the examiner to consider
the matters specified below.
As discussed earlier in this opinion, the definite
meaning of the notation of claim 1 (cut to tie ratio of “.018
x .008 to .012 x .008") should be established in the record.
The evidence in the application file, for example, U.S.
Patent Nos. 5,240,755, 5,537,905, 5,114,771, 4,745,835 cited
by appellants, should be assessed to ascertain whether these
documents provide a factual basis for a conclusion of
obviousness relative to the claimed invention, keeping in mind
the general principle that the discovery of an optimum value
of a recognized result effective variable is ordinarily within
the skill of the art, and hence obvious, absent a showing of
unexpected results. See In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990) and In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1990).
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