Appeal No. 2001-0291 Page 11
Application No. 08/772,559
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
However, exceptions have been found where the results of
optimizing the variable are unexpectedly good or where the
parameter optimized was not recognized to be a result-
effective variable. In re Antonie, 559 F.2d 618, 620, 195
USPQ 6, 8-9 (CCPA 1977). In this instance, as neither Brown
nor Martin provides any indication that the effective depths
of the barriers disclosed therein are result-effective
variables, the examiner’s conclusion that the recited
effective depth would have been obvious appears to stem from
impermissible hindsight. Accordingly, we shall not sustain
the examiner’s rejections of claims 1-17 as being unpatentable
over Brown or Martin.
NEW GROUND OF REJECTION
Pursuant to 37 CFR § 1.196(b), we enter the following new
ground of rejection.
Claims 1-17 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim that which appellants regard as
their invention.
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