Appeal No. 1996-2214
Application No. 08/208,123
3 of the application. In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA
1974).
In our view, Takayama does not provide sufficient reasoning to select or suggest
the claimed variables and their use in combination in a continuous process, as claimed.
Although it is the examiner’s position that optimization of these variables is within the skill
of the art, it is well settled that such optimization or "obvious to try" is not the correct
standard for determining obviousness under 35 U.S.C. § 103. See In re O’Farrell, 853
F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
In the present case, the examiner has not even established that the claimed
parameters for carbon source concentration, carbon/nitrogen ratio and oxygen saturation,
are within the ranges for the variables disclosed in Takayama. We find it significant that
the specifically claimed ranges for glucose and oxygen saturation in the continuous
process for the production of citric acid claimed, fall outside the indicated optimum values
for glucose and aerobic conditions (oxygen requirement) disclosed in the batch process of
Takayama. See In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972).
Incidentally, it was determined in Sebek that in “an area of technology shown to be highly
unpredictable in process values, the discovery of optimum values not in any way
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