Ex Parte MILLER - Page 11




              Appeal No. 1999-0989                                                                         11                
              Application No. 08/265,267                                                                                     


              residue of the crude oil.”  Furthermore in Example 2, of Gabrick, it is stated that, the                       
              surface of the water after removal of the solid absorbent appeared to be cleaner than that                     
              observed in Example 1.  In contrast, the proportions of contaminants to be removed in the                      
              claimed subject matter require the removal of, “at least about 90% of the organic                              
              contaminants.”  We conclude that the proportion set forth in the claimed subject matter                        
              can readily be obtained by one of ordinary skill in the art, particularly in view of the                       
              teachings of Gabrick  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).  Accordingly,                               
              we conclude that the requisite amounts of organic contaminants have been removed by                            
              Gabrick as required by the subject matter of claim 11.                                                         
              Moreover, we do not consider the rejections over Gabrick alone in the absence of                               
              the reference to Biron to constitute a "new ground" of rejection.  The issue, in this respect,                 
              is whether the appellant has had a fair opportunity to react to the thrust of the rejection.                   
              In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976).                                        
              As to claim 8 however, there is no teaching or suggestion of replacing the geometric                           
              shapes in the column once saturated with organic contaminants.  Accordingly, we do not                         
              sustain the rejection over claim 8.                                                                            






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