Appeal No. 96-3604 Page 7
Application No. 08/383,658
mm to a range of 0.2 mm - 0.4 mm “through routine optimization
and experimentation.” (Id.) He further concludes that
replacing the grooved, lower slider of Admission with a slider
lacking a groove as taught in Gomi would have been obvious.
The examiner’s rationale for the replacement is “to have
provided different height levels between the two sliders ....”
(Id.)
The appellants argue inter alia there is no suggestion to
change the width of the groove in Admission’s upper magnetic
head. (Appeal Br. at 8-9.) In response the examiner asserts,
“where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” (Examiner’s
Answer at 6.)
The U.S. Court of Customs and Patent Appeals (CCPA)
established the rule that the discovery of an optimum value of
a variable in a known process is normally obvious. In re
Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As
with many rules, there are exceptions to the CCPA’s rule. One
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