Appeal No. 1995-3232
Application 07/954,686
The examiner acknowledges that Milner does not disclose a number average
molecular weight from 2,890 to 8,000 (Examiner's Answer, Paper No. 45, page 3, lines 11
and 12.) According to the examiner, the parameter of number average molecular weight,
for Milner, is not significant (Examiner's Answer, Paper No. 45, page 3, lines 15 and 16;
page 5, lines 19 and 20.) In fact, based on our review of the reference, we find that Milner
does not mention number average molecular weight. Milner does not disclose or suggest
that number average molecular weight is a result-effective variable or in any way relevant
for achieving effective peritoneal dialysis.
Generally speaking, the discovery of an optimum value of a variable in a known
process is obvious within the meaning of 35 U.S.C. § 103. Our reviewing court has found
exceptions to this rule in cases where the results of optimizing a variable, known to be
result-effective, were unexpectedly good. This case, where the parameter optimized was
not recognized by Milner to be a result-effective variable, is another exception. See In re
Antonie, 559 F.2d 618, 621, 195 USPQ 6, 9 (CCPA 1977).
The rejection of claims 41, 42 and 44 under 35 U.S.C. § 103 as unpatentable over
Milner is reversed.
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