Appeal No. 97-1167 Page 10
Application No. 08/475,062
opines the examiner, “selection of such a range in [sic, is]
considered merely optimization of a range and does not
patentably define over Ottesen ..., especially since no new
and unexpected results are submitted by applicant. See In re
Aller, 105 USPQ 233 (CCPA 1955).” (Id.)
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
exception is the case where a parameter being optimized was
not recognized to
be a “result-effective variable.” In re Yates, 663 F.2d 1054,
1057, 211 USPQ 1149, 1151 (CCPA 1981); In re Antonie, 559 F.2d
618, 621, 195 USPQ 6, 9 (CCPA 1977). We find this exception
applies here.
In determining whether the invention as a whole would
have been obvious under § 103, we must first delineate the
invention as a whole. In delineating the invention as a
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