Appeal No. 2000-2149 8
Application No. 08/859,901
We conclude that the combination of solvents, the ratios, and the proportions set
forth in the claimed subject matter could have been readily obtained by one of ordinary
skill in the art, particularly in view of the teachings of Shimizu supra, and as such are result
effective variables. It is well settled that discovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art. See In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); In re Antonie, 559 F.2d 618,
620, 195 USPQ 6, 8-9 (CCPA 1977); and In re Aller, 220 F.2d 454, 456, 105
USPQ 233, 235 (CCPA 1955). Based upon the above findings and analysis, we
conclude that the Shimizu reference of record is sufficient to establish a prima facie case of
obviousness with respect to claim 1.
As to claim 20 directed to the characteristics of the ink, it is well settled that when
appellants’ product and that of the prior art appear to be identical or substantially identical,
the burden shifts to appellants to provide evidence that the prior art product does not
necessarily or inherently possess the relied-upon characteristics of appellants’ claimed
product. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 597 (CCPA 1980); In re
Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433-34 (CCPA 1977).
Furthermore, the discovery of a new property even when that property is unobvious from
the prior art, cannot impart patentability to claims directed to a known composition. In re
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007