Appeal No. 2004-1530
Application No. 09/870,770
size. Given appellant’s purpose for selecting a combination of
side gear and pinion mate gear, and the lack of any teaching in
AAPA of selecting the number of teeth on the side gear and the
number of teeth of the pinion mate gear so that the combination
thereof achieves a desired result, we cannot accept the examiner’s
position that it would have been obvious to modify AAPA in a manner
to arrive at the subject matter of appellant’s independent claims.
In this regard, the examiner’s theory of obviousness based on the
principle of discovering the optimum value of a variable does not
apply here because the variable in question (i.e., the sum of the
number of teeth on the side gear and the number of teeth on the
pinion mate gear) has not been shown by the examiner to be
recognized in the art as being a result effective variable. In re
Antoine, 559 F.2d 618, 621, 195 USPQ 6, 8-9 (CCPA 1977).
In what may be termed an alternative theory of obviousness,
the examiner takes Official Notice “of the fact that the
relationship between the number of teeth on the side gear and the
number of teeth on the pinion mate gear, whether expressed as a
sum, a difference, or a ratio, determines the rate of rotation of a
wheel that has lost traction” (final rejection, page 4).3 On this
3In that appellant does not appear to challenge the
(continued...)
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