Appeal No. 1999-0037 Page 8
Application No. 08/611,657
The examiner fails to show a suggestion of the
limitations in the prior art. The U.S. Court of Customs and
Patent Appeals (CCPA) established the rule that the discovery
of an optimum value of a variable in a known process is
normally obvious.
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As with many rules, there are exceptions to the CCPA’s rule.
One exception is the case where a parameter being optimized
was not recognized to be a “result-effective variable.” In re
Yates, 663 F.2d 1054, 1057, 211 USPQ 1149, 1151 (CCPA 1981);
In re Antonie, 559 F.2d 618, 621, 195 USPQ 6, 9 (CCPA 1977).
This exception applies here.
In determining whether the invention as a whole would
have been obvious under § 103, we must first delineate the
invention as a whole. In delineating the invention as a
whole, we look to the subject matter recited in the claim and
to those properties of the subject matter disclosed in the
specification. Antonie, 559 F.2d at 619, 195 USPQ at 8.
Here, the invention as a whole is that the respective waists
of two longitudinal bearing surfaces are wider than the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007