Appeal No. 1997-1003
Application No. 08/188,145
why the skilled artisan would have modified the references to
meet such claim limitations.
In addition, claim 32 recites "transfer efficiency ' of
strain through the flex circuit bonded to the sheet strain
element is greater than 5 x 10 pounds/inch ," claim 34 recites10 4
"strain of the electro-active device constitutes at least
fifty percent of free element strain of said sheet strain
element," and claim 36 recites "ratio of package to free
element curvature is greater than .7." The examiner (Answer,
page 3) refers to each of these limitations as "dimensions"
and states that "to discover optimum or workable ranges or
values as such involves only routine skill in the art,"
referring to In re Boesch, 205 USPQ 215 and In re Aller, 105
USPQ 233. However, the court in In re Boesch and In re Aller
held that optimization of result effective variables would
have been obvious. However, neither case supports the
examiner's assertion that optimization of any variable would
have been obvious. Since the examiner has not provided any
evidence that the limitations are directed to result effective
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