Ex parte TAKEMOTO et al. - Page 7

          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                


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