Appeal No. 1998-1188 Page 12
Application No. 08/628,556
particular number of turns and the length of the spike are
result effective variables which are recognized in the art.
This being the case, the selection of an optimum value for
such variables is ordinarily an obvious matter which is within
the skill of the art. In re Geisler, 116 F.3rd 1465, 1470, 43
USPQ2d 1362, 1365 (Fed. Cir. 1997) and In re Boesch, 617 F.2d
272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re
Fields, 304 F.2d 691, 695-96, 134 USPQ 242, 245 (CCPA 1962),
In re Troiel, 274 F.2d 944, 949, 124 USPQ 502, 505 (CCPA 1960)
and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
1955).
As the court stated in In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990)
[n]or can patentability be found in the difference in
. . . ranges recited in the claims. The law is replete
with cases in which the difference between the claimed
invention and the prior art is some range or other
variable within the claims. . . . These cases have
consistently held that in such a situation, the applicant
must show that the particular range is critical,
generally by showing that the claimed range achieves
unexpected results relative to the prior art range . . .
(obviousness determination affirmed because dimensional
limitations in claims did not specify a device which
performed and operated differently from the prior art). .
. . [Citations omitted.]
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