Appeal No. 2002-1127
Application No. 09/042,897
reasons, we shall not sustain the examiner’s rejections of claims 12-14 as being unpatentable over
Miyake in view of either D’Angelo or Helprin.
We also find the examiner’s treatment of the claim recitations (1) that the blades are
positioned at an angle of from about ten degrees to about fifteen degrees relative to the web material
and (2) that the film material being cut is a photoresist film web to be worthy of comment. As to
(1), the advantage urged by appellants for the claimed blade angle may not be dismissed because it
is not mentioned in appellants’ original disclosure as the examiner has done here (answer, page
17).1 Nor is it dispositive of the obviousness issue that appellants have not shown the claimed range
of blade angle to be critical.2 In addition, the principle of optimization of a variable would not
appear to be apply here with respect to the angle of the cutter blade.3 Concerning (2), the positive
recitation of cutting photoresist film web material in the body of claim 12 dictates that the particular
1Simply because the asserted advantage is not included in the original specification does
not mean that such advantage need not be considered. See In re Chu, 66 F.3d 292, 298, 36
USPQ2d 1089, 1094 (Fed. Cir. 1995).
2A prima facie case of obviousness cannot be premised on a lack of criticality because
criticality is not a requirement for patentability under the patent statute, but is merely one of the
indicia suggestive of nonobviousness. See, for example, In re Luvisi, 342 F.2d 102, 108, 144
USPQ 646, 651 (CCPA 1965)).
3While the discovery of the optimum value of a variable in a known process is normally
obvious, this principle does not apply where the parameter optimized is not recognized in the art
as being a result-effective variable. In re Antoine, 559 F.2d 618, 621, 195 USPQ 6, 8-9 (CCPA
1977). In the present case, the examiner has not established that the blade angle is recognized in
the art as being a result-effective variable. Hence, the principle of optimization does not apply.
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