Appeal No. 2002-0435 Page 5
Application No. 08/946,087
insufficient evidence to support a conclusion of obviousness of claim 5 on appeal.
According to the examiner, the "claims" differ from Stockburger's process by
reciting a different temperature (Paper No. 21, page 5, first paragraph). This apparently
refers to the process of dependent claim 5, because that claim, and that claim alone,
recites a temperature range. The examiner argues that "optimization of a known
reaction process is not a patentable modification absent a showing of criticality. In re
Aller, 220 F.2d 454, 105 U.S.P.Q. 233 (C.C.P.A. 1955)." As stated in In re Sebek,
465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972), however, "while it may ordinarily
be the case that the determination of optimum values for the parameters of a prior art
process would be at least prima facie obvious, that conclusion depends upon what the
prior art discloses with respect to those parameters." Here, Stockburger discloses that
its diatomaceous earth is added at a temperature of 101°C; and there is no other
disclosure in Stockburger which would have led a person having ordinary skill to a lower
temperature range. On these facts, we conclude that the process sought to be
patented in claim 5, where silica is added at a temperature from about 30°C to about
80°C, would not have been obvious based on Stockburger alone.
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over
Stockburger is reversed.
Conclusion
In conclusion, for the reasons set forth in the body of this opinion, we affirm the
examiner's decision rejecting claims 1, 3, 4, and 6 through 11. However, we reverse
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