Appeal No. 2001-1660
Application No. 09/146,478
The appellants argue that Mikeska does not teach or suggest using the claimed amount of a
resin binder in its constraining layer. See, e.g., the Brief, page 8. We disagree.
As found by the examiner (Answer, pages 7-8), it can be inferred from the amount of the
non-metallic (ceramic) particles employed in Mikeska’s constraining layer that the amount of the
solid organic polymer (resin) binder employed therein, which constitutes the remaining component
of the constraining layer, includes the amount of the resin binder recited in claims 1 and 16.3 See In
re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974) (the claimed invention is
rendered prima facie obvious by the teachings of a prior art reference that discloses a range that
touches the range recited in a claim). Moreover, we determine that Mikeska indicates that the
amount of the solid organic polymer (resin) binder employed is no more than a result effective
variable. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)(when
“the difference between the claimed invention and the prior art is some range or other variable
within the claim,” the claimed invention is not deemed patentable unless the appellants show “that
the claimed range achieves unexpected results relative to the prior art range”); In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) (it would be well within the knowledge of a
skilled artisan to determine optimum or workable result effective variables). As is apparent from
column 1, lines 39-65 and column 11, lines 16-23, of Mikeska, the amount of the solid organic
3 See also Mikeska, column 11, line 63 to column 12, line 23.
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