Appeal No. 1997-0221
Application 08/248,496
which is noted in In re Sebek, 465 F.2d 904, 907, 175 USPQ 93,
95 (CCPA 1972):
However, while it may ordinarily be the case that
determination of optimum values for parameters of a
prior art process would be at least prima facie
obvious, that conclusion depends upon what the prior
art discloses with respect to those parameters.4
The examiner has based his conclusion on Hogan, who
teaches beneficial results when adding sodium sesquicarbonate
(i.e., trona) to an animal feed supplement (page 1, ll. 1-8).
However, Hogan teaches adding sodium sesquicarbonate as an
ingredient of an animal feed mixture “in an amount sufficient
to maintain rumen
pH within the range of 5.5 to 7.0.” (page 7, ll. 9-13). Hogan
teaches addition of a maximum amount of 1.5% of the sodium
bicarbonate or the sesquicarbonate (page 7a, Experiment One,
and claims 2 and 5 on page 18). The minimum amount of sodium
bicarbonate and sesquicarbonate recited in the claimed subject
matter on appeal is 5% (see claim 1). Accordingly, contrary
to the examiner’s assertion, “the general conditions of a
4Although the decisions cited above all concern processes and the claims on
appeal are directed to compositions, in our opinion the same factors must be considered
in determining obviousness. See In re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362,
1365 (Fed. Cir. 1997), and In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990).
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