Appeal No. 2003-1788
Application No. 09/403,081
variable is critical.). This is especially true in this case
since Gitman recognizes the importance of controlling the flow of
oxygen-containing gases to optimize the combustion. See page 23,
lines 31-37 and page 34, especially page 34 and lines 36-37. In
other words, Gitman recognizes that the velocity of oxygen-
containing gases is a result effective variable in its Claus
sulfur process. See In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980)(“[D]iscovery of an optimum value of a result
effective variable in a known process is ordinarily within the
skill of the art.”). Thus, I concur with the examiner that
Gitman would have rendered the subject matter of claims 2, 4
through 11, 13 through 15, 17, 18 and 22 through 24 obvious
within the meaning of 35 U.S.C. § 103.
In any event, I wish to emphasize that even without Gitman,
the admittedly known knowledge imputed to one of ordinary skill
in the art alone would have rendered the claimed subject matter
obvious.4 Claim 22, for example, is written in Jepson format.
Ex parte Jepson, 1917 Dec. Comm’r Pats. 62, 243 Off. Gaz. 525
(1917). Thus, the subject matter recited in the preamble of
claim 22 is impliedly admitted to be old in the art. In re
Ehrreich, 590 F.2d 902, 909, 200 USPQ 504, 510 (CCPA 1979);
4 Under 35 U.S.C. § 103, to establish a prima facie case of
obviousness, there must be some objective teachings or
suggestions in the applied prior art references and/or knowledge
generally available to a person having ordinary skill in the art
that would have led such person to arrive at the claimed subject
matter. See generally, In re Oetiker, 977 F.2d 1443, 1447-48,
24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992); In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). The knowledge
generally available to a person having ordinary skill in the art
includes appellants’ admission regarding what was known in the
art at the time of the claimed invention. In re Nomiya, 509 F.2d
566, 570-71, 184 USPQ 607, 611-12 (CCPA 1975); In re Davis,
305 F.2d 501, 503, 134 USPQ 256, 258 (CCPA 1962).
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