Appeal No. 2001-1002
Application No. 08/709,963
depending on the viscosity wanted for the composition.” Id. To
the examiner’s credit, it is generally considered that it would
have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for parameters or variables which
are known in the prior art as being result-effective. In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); In re
Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
However, whether an obviousness conclusion is appropriate depends
upon what the prior art discloses with respect to the parameter
in question. In re Sebek, 465 F.2d 904, 906-07, 175 USPQ 93,
95 (CCPA 1972). For example, where the prior art discloses a
range of values and suggests that workable or optimum values
should be sought within that range, a parameter value outside the
range might not have been obvious. Id.
Here, the lowest thickening agent amount claimed by the
appellants is two and a half times higher than the highest
thickening or viscosifying agent concentration disclosed by
Anderson. Moreover, patentee’s preferred (i.e., optimum)
concentrations are far below his highest concentration and thus
do indeed teach away from the here claimed range as urged by the
appellants. These circumstances support a determination that the
examiner’s rationale in concluding obviousness is deficient.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007