Appeal No. 1997-0287
Application 08/263,034
Cir. 1998) ("On appeal to the Board, an applicant can overcome
a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness."). The rejection of
claims 5 and 14-18 over Andres and either Swearingen '689 or
Swearingen '768 is sustained.
Claim 11 recites "said controller only regulates said
control valve when said thrust bearing current exceeds 20% of
said maximum value of said thrust bearing current." The first
time the Examiner mentions this limitation is in the
Examiner's Answer where it is stated that "it has long been
held that developing optimization of a device is within the
skill expected of the routineer and therefore obvious" (EA4).
We agree with Examiner that optimization of variables
known to be result effect variables would have been within the
level of skill of one of ordinary skill in the art. However,
there must first be some teaching or suggestion in the prior
art or the knowledge of one of ordinary skill in the art that
identifies the variable as a result effective variable. The
Swearingen patents do not disclose or suggest a threshold
limitation to prevent hunting, nor has the Examiner pointed to
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