Appeal No. 2001-1723
Application No. 09/112,263
but also describes the corresponding limitation recited in use claim 10, within the meaning of 35
U.S.C. § 102(b).
With respect to claim 4, the appellants argue that neither Hotaling ‘364 nor Hotaling ‘776
teaches or would have suggested a glass sheet having a thickness of about 0.1 mm. We do not
agree.
Although the Hotaling references do not mention the thickness of their planarizing SiO2
layer, it can be inferred from the teachings therein that the thickness of the planarizing SiO2 layer
must serve both the planarizing and weight reducing purposes (essentially the same purposes as the
appellants’). In other words, we determine that one of ordinary skill in the art would have
recognized that the thickness of the planarizing SiO2 layer described in the Hotaling references is no
more than a result effective variable. Thus, we conclude that mere optimization of the thickness of
the planarizing SiO2 layer described in the Hotaling references to obtain the desired thickness is
well within the level of one of ordinary skill in the art. In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980).
As stated by our reviewing court in In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936 (Fed. Cir. 1990):
The law is replete with cases in which the difference between the claimed invention
and the prior art is some range or other variable within the claims .... These cases
have consistently held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range. [Citations omitted].
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