Appeal No. 2001-2490
Application No. 09/388,056
recognizes that the “only difference” between the disclosure of
Holiday and the claimed process is the operating temperature,
namely Holiday operates at 50-150 °F. while the claimed operating
temperature is 100 to 400 °C. (212 to 752 °F.). Id. The examiner
states that “it is well-known that the temperature of chemical
reaction process must be selected to optimize the process.” Id.
The examiner cites several cases for the holding that “where the
general conditions of the claimed [invention] are disclosed in the
prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.” Id.
As correctly argued by appellant (Reply Brief, pages 3-4),
the cases and holding cited by the examiner are restricted to the
obviousness of finding optimum ranges within general ranges known
in the prior art. The examiner admits this from the quote above,
namely that “where the general conditions of the claimed
[invention] are disclosed in the prior art....” On this record,
the only condition disclosed by the prior art of Holiday is an
operating temperature of 50 to 150 °F. (col. 2, ll. 41-42). The
claimed operating temperature is not close to this range of Holiday
(212 to 752 °F.). Therefore the examiner has not established, by
convincing evidence or reasoning, why it would have been obvious to
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