Appeal No. 1997-1335
Application No. 08/201,023
were determined. Determining the optimal values of result
effective variables would have been obvious and ordinarily
within the skill of the art. In re Boesch, 617 F.2d 272, 205
USPQ 215 (CCPA 1980).
Appellants argue the standard for patentability is
not whether it would have been “obvious to try” the claimed
invention, and cite In re Fine (brief-page 9). We do not find
this to be an “obvious to try” situation. Miura and Fujimura
both teach trying various amounts of uncoated areas. We find
this to be a situation of “obvious to optimize”, based on
result effective variables.
Looking at the scope of claim 1, we note that the
claimed size is “no greater than approximately 140%” (emphasis
added). We also note that claim 5 recites “no greater than
approximately 120% (emphasis added). Since there is a
difference of 20% between the two claims, it would be logical
to project the high end of claim 1 to be about 160%. On the
other hand, since the lower limit is recited in claim 1 as
merely “larger than a diameter of said nozzle holes”, we
reason the lower limit could be as low as 100.001%, probably
7
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