Appeal No. 2001-0059 Page 3
Application No. 08/530,370
that Athe density of receptor molecules in the membrane can be controlled and hence
optimized for the most sensitive detection of the desired analyte.@ Answer, page 7. We
disagree with the examiner=s conclusion.
While we agree with the examiner that Adiscovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the art,@ In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) (citations omitted), our
reviewing court has found an exception to this general rule where Athe parameter
optimized was not recognized to be a result effective variable,@ In re Antonie, 559 F.2d
618, 621, 195 USPQ 6, 8 (CCPA 1977).
In our view, the examiner has not established that one skilled in the art would
have recognized the ratio of first receptor molecules to second receptor molecules as a
result effective variable. In other words, the examiner has not identified anything in
Cornell II which would have led one skilled in the art to recognize or expect that
manipulating the relative proportions of first and second receptor molecules within the
membrane (as opposed to altering the overall density of receptor molecules in the
membrane) would affect the performance of the membrane.
As explained in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to section
103(a) is casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field. [ ] Close adherence
to this methodology is especially important in cases where the very ease
with which the invention can be understood may prompt one Ato fall victim
to the insidious effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.@ [ ]
We have no doubt that the prior art could be modified in a manner consistent
with appellants= specification and claims. The fact that the prior art could be so
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