Appeal No. 1997-1221
Application No. 08/299,591
have selected the particular thickness of the metal
sheet and the bulk density of the nonwoven fabric in
order to optimize the desirable properties of the
heat shield such as strength and heat insulation,
both of which are taught by the references to be
related to the thickness of the metal sheet and the
bulk density of the nonwoven fabric
and that “[i]t is prima facie obvious to optimize a known
result effective variable through the process of routine
experimentation” (answer, page 5).
This analysis by the examiner is flawed because it
implicitly presupposes, without any evidence or rationale,
that
the optimization of variables in accordance with the reference
teachings would yield the soundproof heat shield member
defined by the independent claim on appeal. The validity of
this presupposition clearly is suspect in view of the earlier
discussed fact that the appellants’ heat shield member is
designed to possess a soundproofness characteristic with
respect to which the applied references are silent.
Thus, it is simply unknown whether an article
corresponding to the here claimed soundproof heat shield
member would result from combining and optimizing the
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