Ex parte AGAHI et al. - Page 19




          Appeal No. 1997-0287                                                        
          Application 08/263,034                                                      

          machinery in association with a compressor on a shaft would                 
          have the same problem of thrust imbalance and would have been               
          motivated to use a thrust balancing system as taught in Miura.              
               For the reasons discussed above, we conclude that                      
          Appellants have not shown that the rejection is based on                    
          insufficient evidence of prima facie obviousness.  The                      
          rejection of claims 5 and 14-18 over Andres and Miura is                    
          sustained.                                                                  
               With respect to claim 11, Miura states (col. 6, line 66,               
          to col. 7, line 2):  "An [sic] dead band 52 is provided in the              
          control line to the control valve 30 to correct the opening of              
          the control valve only when the deviation signal becomes                    
          greater than a certain level, thereby preventing hunting."                  
          Thus, Miura discloses a threshold, but does not disclose a                  
          particular value for the threshold.  One of ordinary skill in               
          the art, knowing that a threshold value should be selected to               
          prevent hunting is presumed to have had sufficient skill to                 
          determine a specific value by routine experimentation.  See                 
          In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980)              
          ("[D]iscovery of an optimum value of a result effective                     
          variable in a known process is ordinarily within the skill of               

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