Ex parte ALSOP et al. - Page 6




              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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