Appeal No. 2002-1103
Application No. 09/580,413
discovery of an optimum value of a result effective variable is
ordinarily within the skill of the art” (Answer, page 7), citing
In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
While this legal maxim is generally true for an optimum value
within a prior art range, the Appellant’s claimed percentages of
fatty acids lie far outside the above noted range of Schumacher.
For example, the lowest amount of fatty acids claimed by the
Appellant is 75 weight percent whereas the highest amount of fatty
acids in Schumacher’s stabilizer is 46.15 weight percent. Under
these circumstances, no support exists for the Examiner’s apparent
belief that an optimization of Schumacher’s fatty acid amount would
have yielded values within the Appellant’s claimed ranges. See
In re Sebek, 465 F.2d 904, 906, 175 USPQ 93, 95 (CCPA 1972).
Though less than a model of clarity, the remarks in the last
full paragraph on page 4 of the supplemental answer reflect that
the Examiner regards the stabilizer limitations of appealed claim 1
as satisfied by considering Schumacher’s fatty acid to be the only
stabilizer component of his composition. However, such a viewpoint
is in direct conflict with the disclosure of the Schumacher patent.
This is because patentee explicitly discloses that his stabilizer
comprises three components, namely, chitosan, fatty acid and water
(e.g., see the paragraph bridging columns 1 and 2 as well as the
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