Appeal No. 2004-0250 Page 10
Application No. 09/226,412
preparations. Thus, one of ordinary skill in the art would need to determine an optimum
amount of surfactant to be used to perform the enhancer function described in Chance.
As set forth in In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980), it is
normally prima facie obvious for a person of ordinary skill in the art to optimize a result
effective parameter. Thus, one of ordinary skill in the art, in implementing the
surfactant embodiment described in the specification, would have found it obvious to
optimize the amount of surfactant to be used to perform the enhancer function
described by Chance. Appellants have not shown by way of objective evidence that
such an optimized amount would not be within the ratios required by Jensen claims 14
and 15.
From the above analysis, it is seen that the subject matter of the present claims
viewed in light of relevant prior art render obvious the subject matter of Jensen claims
14 and 15. Thus, this aspect of the two-way test is met. Appellants have not provided
a fact-based analysis as to why the other aspect of the two-way test is not met under
the present circumstances. In other words, appellants have not explained why Jensen
claims 14 and 15 do not anticipate or render obvious the claims pending in this
application. Thus, the two-way test is met and the examiner was correct in not
accepting appellants’ showings under 37 CFR § 1.131. Since we have explained for
the first time in this case why the two-way test has been met, we denominate our
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