Appeal No. 2002-0523
Application No. 09/117,918
We agree with appellants, that the examiner has failed to present sufficient
evidence to support a prima facie case of obviousness. Generally, "the discovery of an
optimum value of a variable in a known process is normally obvious." In re Antonie,
559 F.2d 618, 619, 195 USPQ 6, 8 (CCPA 1977). In re Boesch, 617 F.2d 272, 276,
205 USPQ 215, 219 (CCPA 1980) (citing In re Antonie with approval). The key to this
rule is that the burden remains with the examiner to show that variable in question is
"known to be result effective." In re Antonie 559 F.2d at 621, 195 USPQ at 9.
Exceptions to this rule have been found in cases where the results of optimizing a
variable, which was known to be result effective, were unexpectedly good. In re
Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974). Another
exception is the case in which the parameter optimized was not recognized to be a
result-effective variable. See In re Antonie, 559 F.2d 618, 619, 195 USPQ 6, 8 CCPA
1977).
The examiner has argued that “it is within the skill of the art to select optimal
parameters, such as amounts of ingredients, in a composition in order to achieve a
beneficial effect.” The examiner, however, has failed to provide evidence that both the
optimal parameters or ratios claimed, and how to achieve the desired cosmetic or
pharmaceutical beneficial effect were known in the art, or were known to be result
effective variables. For example, the examiner has not indicated how the optimal
parameters for preparing an oil which can be used for margarine or an edible food
relate to parameters necessary to obtain desired cosmetic or pharmaceutical benefit.
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