Appeal No. 2004-1412
Application 09/818,686
conductive path in the reference, the reasonable suggestion that the workable or optimum range
of the area of each of the metal elements of the thermally conductive path can be determined for
the desired amount of heat radiation.
Accordingly, prima facie, one of ordinary skill in this art routinely following the
teachings of Christopher would have reasonably arrived at the relative areas of the different metal
elements of a printed wiring board as required by the appealed claims without recourse to
appellant’s specification. 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. [Citations omitted.]”); In re Aller, 220 F.2d 454, 456,
105 USPQ 233, 235 (CCPA 1955) (“[W]here 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.”). Therefore, the burden falls upon appellant to establish by effective argument
or objective evidence that the claimed invention patentably distinguishes over the disclosure of
Christopher. See, e.g., In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA
1977)( “Where, as here, the claimed and prior art products are identical or substantially identical,
or are produced by identical or substantially identical processes, the PTO can require an applicant
to prove that the prior art products do not necessarily or inherently possess the characteristics of
his claimed product. See In re Ludtke, [441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether
the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under
35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare prior art products.
[Footnote and citation omitted.]”); Aller, supra; see also In re Woodruff, 919 F.2d 1575, 1577-
78, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990) (“The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or other variable within
the claims. [Citations omitted.] These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. [Citations omitted.]”).
With respect to appealed claims 6, 7, 13 and 19, which require that the heat radiating
means is made of metal, contacts the circuit board through a plated layer and has a plurality of
- 7 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007