Appeal No. 1999-0387 Page 19
Application No. 08/590,278
distances set forth in claims 13, 14 and 18 "would have been
obvious based on routine experimentation for optimization."
This accords with the general rule that discovery of an
optimum value of a result effective variable (in this case,
the optimum distance) is ordinarily within the skill of the
art. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980) and In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955). As stated in In re Huang, 100 F.3d 135, 139,
40 USPQ2d 1685, 1688 (Fed. Cir. 1996):
This court and its predecessors have long held,
however, that even though applicant's modification
results in great improvement and utility over the
prior art, it may still not be patentable if the
modification was within the capabilities of one
skilled in the art, unless the claimed ranges
"produce a new and unexpected result which is
different in kind and not merely in degree from the
results of the prior art."
Additionally, as stated in In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990):
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
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