Appeal No. 2004-0777 Page 6
Application No. 09/731,726
Also, see In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d
1379, 1382 (Fed. Cir. 2003)(“The normal desire of scientists or
artisans to improve upon what is generally known provides the
motivation to determine where in a disclosed set of percentage
ranges is the optimum combination of percentages.”); 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.”); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
1955)(“[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
Moreover, appellants’ contention that one of ordinary skill
in the art would not be motivated to combine the teachings of
Ogashiwa and Akamatsu because lead is an optional ingredient in
Ogashiwa but contraindicated in Akamatsu is untenable.
Certainly, one of ordinary skill in the art would recognize that
the option not to include lead as disclosed in Ogashiwa would be
exercised to achieve low alpha amounts and lower soft error as
taught by Akamatsu. Rather than point out a lack of motivation,
appellants’ comments highlight the explicit motivation present
within the four corners of the applied references that would have
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007