Ex Parte PETRAK - Page 4


               Appeal No. 2000-1850                                                                                                   
               Application 09/098,822                                                                                                 

               ordinary skill in this art to even consider experimentation, routine or not, at the temperature range                  
               specified in appealed claim 1 for any purpose, and particularly for the purpose of achieving “a                        
               crystal containing ceramic” as defined in claim 1.  See In re Sebek, 465 F.2d 904, 907, 175 USPQ                       
               93, 95 (CCPA 1972) (“Where, as here, the prior art disclosure suggests the outer limits of the                         
               range of suitable values, and that the optimum resides within that range, and where there are                          
               indications elsewhere that in fact the optimum should be sought within that range, the                                 
               determination of optimum values outside that range may not be obvious.”).                                              
                       No knowledge in the prior art other than Petrak has been identified by the examiner with                       
               respect to the allegation of “routine experimentation,” and the basis for the alleged definition of                    
               “ceramic” is not apparent.  Thus, on this record, the only direction to the claimed invention                          
               resides in appellant’s specification.  See Rouffet, supra (“hindsight” is inferred when the specific                   
               understanding or principal within the knowledge of one of ordinary skill in the art leading to the                     
               modification of the prior art in order to arrive at appellant’s claimed invention has not been                         
               explained); cf. Ex parte Levengood, 28 USPQ2d 1300, 1301-02 (Bd. Pat. App. & Int. 1993) (“At                           
               best, the examiner’s comments regarding obviousness amount to an assertion that one of ordinary                        
               skill in the relevant art would have been able to arrive at appellant’s invention because he had the                   
               necessary skills to carry out the requisite process steps.  This is an inappropriate standard for                      
               obviousness. . . . That which is within the capabilities of one skilled in the art is not synonymous                   
               with obviousness. Ex parte Gerlach, 212 USPQ 471 (Bd. App. 1980).”).                                                   















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