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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