Ex Parte FERBER et al - Page 5



         Appeal No. 2004-1622                                                        
         Application No. 09/431,178                                                  
              holes [44] are provided through the member so that the                 
              coolant may flow from the pressurized chamber to the                   
              Aouter@ surface thereof [column 2, lines 37 through                    
              47].                                                                   
              Howald teaches that A[m]any interrelated factors contribute            
         to the effectiveness of the holes 44 in providing the desired               
         cooling action@ (column 5, lines 6 and 7).  The factors discussed           
         include the cross-sectional shape of the holes, the diameter of             
         the holes, the angular disposition of the holes relative to the             
         outer surface, the arrangement of the holes on the outer surface,           
         the included angle of the holes, and the length to diameter ratio           
         of the holes (see, for example, column 2, line 53, through column           
         3, line 15; column 5, lines 7 through 18 and 62 through 68; and             
         column 6, lines 14 through 24).                                             
              Although Howald does not mention the ratio of the cross-               
         sectional areas of the hot-side and cold-side orifices as a                 
         factor contributing to the effectiveness of the coolant holes,              
         the examiner submits that                                                   
                   [s]ince the originally filed disclosure of the                    
              instant application fails to even mention any                          
              criticality associated with the claimed range for the                  
              abovementioned ratio of areas, it is reiterated that it                
              would not have been inventive to discover the optimum                  
              range or another workable range for the abovementioned                 
              ratio of areas by routine experimentation.  . . .                      
                   It would thus have been obvious at the time of the                
              invention to perform routine experimentation in order                  
              to optimize the relative areas of the hot-side orifice                 
              and the cold-side orifice of Howald to a particular                    
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