Appeal No. 1999-2143
Application No. 08/734,866
have identified the publication dates for the abstracts, not the
publication dates for the underlying patent applications. Because
the appellants’ and the examiner’s considerations of JP ‘188 and JP
‘005 appear to be limited to the English language abstracts, we also
limit our discussion to the abstracts.
We now turn to the merits of the examiner’s rejections.
Referring to the English language abstract, the examiner states that
JP ‘188, the principal reference, “teaches a method where the
printing process of soldering paste is controlled by test ‘dummy’
patterns.” (Examiner’s answer, page 3.) The examiner, however,
acknowledges that JP ‘188 “fails to teach that the test ‘dummy’
patterns are formed at different distances from each other,” as
required by the appealed claims. (Id.) Nevertheless, the examiner
alleges:
[T]he Examiner has taken the position that it would have
been within the skill of a practitioner in the art to have
varied the distances between the test “dummy” patterns
with the reasonable expectation of achieving similar
results. The distances between the test “dummy” patterns
as well as the shape, size, etc. are all “result
effective” variable[s] which are manipulated by a
practitioner in the art depending upon the desired end
product produced. It has been well settled that the mere
“optimization” of “result effective” variables is deemed
as an obvious modification of the prior art. . . [Id. at
pp. 3-4.]
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