Appeal No. 1998-0982 Page 4
Application No. 08/399,715
experimentation and optimization, to provide a
spring having the characteristics which are
claimed because since it is well known that one
of skill in the art would routinely experiment
to choose a spring which would best allow for
the characteristics which are required of the
shaft.
To the extent that the language in appealed claim 1 is
understandable, we cannot sustain the standing § 103 rejection.
Admittedly, there are cases which have held that “optimization”
may not in itself patentably distinguish the claimed subject
matter over the prior art. However, in all of the authorities
known to us, the optimization relates to a range or a variable.
See, for example, In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980) (The discovery of an optimum value of a
result effective variable in a known process is ordinarily
within the skill of the art and, hence, obvious.).
In the case at bar, appellant’s claimed diaphragm spring
is required to be structurally different from Barth’s diaphragm
spring in order to provide the negative slope characteristic.
Thus, in the present case, patentability of appellant’s claimed
invention is predicated on a difference in structure, and not
on a change in a variable. The rule in Boesch therefore is not
applicable to the present case, especially in view of the fact
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