Appeal No. 2001-0661 9
Application No. 08/480,232
specific difference in flexural rigidity called for in claim 26. Hence, the standing § 103
rejection of these claims based on Sibalis cannot be sustained.
Claims 23 and 25 depend from claim 21 and add that the flexible means has a
flexural rigidity of less than about 0.75 x 10-3 kg-m2/rad, and of less than about 0.45 x 10-3
kg-m2/rad, respectively. On page 10 of the main brief (Paper No. 17), appellants observe
that (1) claims 2-6, 22-26, 35-39 and 51-56 require a flexural rigidity defined by the
formula EI = (WL2)/(22), (2) no mention of flexural rigidity is found in Sibalis, and (3) the
claim terminology removes the presently claimed invention from the relative term
contention of the examiner. Merely pointing out a claim limitation without specifically
explaining why that claim language would not have been obvious at the time of the
invention to one of ordinary skill in the art in light of the teachings of the applied reference
does not constitute a separate argument in favor of patentability. Accordingly, we
consider that claims 23 and 25 have not been separately argued apart from claim 21, and
on that basis we will sustain the standing § 103 rejection thereof.3
3In any event, the rejection is sound. In this regard, it is clear that Sibalis
recognizes the flexibility of the applicator to be a result effective variable for preventing
loosening of the applicator from a user’s skin (see, for example, column 3, lines 1-39).
The determination of an optimum or workable value of an art recognized result effective
variable is ordinarily considered to be within the ambit of ordinary skill in the art in the
absence of a showing of criticality of the parameter in question. See In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Boesch, 617 F.2d
272, 276, 205 USPQ 215, 219 (CCPA 1980); and In re Aller, 220 F.2d 454, 456, 105
USPQ 233, 235 (CCPA 1955). In that no evidence of criticality is of record, the
teachings of Sibalis would have suggested to those of ordinary skill in the art the
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