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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