Appeal No. 1996-2214
Application No. 08/208,123
impermissible. See, for example, W. L. Gore and Assocs. Inc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner may not resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for the rejection. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
Similarly, the examiner argues that the slight difference in [production] results
described in the specification and Fig. 3 would appear to be no more than a difference of
degree rather than a difference in kind (Examiner’s Answer, page 4). In In re Aller, 220
F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), a predecessor of our appellate
reviewing court set out the rule that the discovery of an optimum value of a variable in a
known process is normally obvious. Exceptions to this rule have been found in cases
where the results of optimizing a variable, which was known to be result effective, were
unexpectedly good. In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA
1974). Another exception is the case in which the parameter optimized was not
recognized to be a result-effective variable. See In re Antonie, 559 F.2d 618, 619, 195
USPQ 6, 8 CCPA 1977). In the present case, the result of obtaining increased citric acid
production in a continuous process by selecting a combination of parameters including air
saturation of the medium coupled with a specific glucose requirement and
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