Appeal No. 1998-2169
Application No. 08/610,069
namely, 30.64 x 10-5. Furthermore, appellant demonstrates in
calculations in the reply brief that a higher D/R value,
0.089, corresponds to an index of surface area of 0.0005 which
is outside the claimed range. We not that the examiner has
not criticized appellant’s calculations in the reply brief.
Hence, while it is generally true that it is a matter of
prima facie obviousness for one of ordinary skill in the art
to optimize a result effective variable, it is not generally
obvious for one of ordinary skill in the art to optimize
outside of a range disclosed by the prior art. In re Sebek,
465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972).
Accordingly, based on the present record, we concur with
appellant that the examiner has not established a prima facie
case of obviousness for the claimed subject matter.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
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