Appeal No. 2004-2148
Application No. 09/362,397
It is our judgment that, prima facie, one of ordinary skill in the art
would have determined through mere routine experimentation the
optimum or workable values for the ratio of the Si, C and H components
thus arriving at a method encompassed by appealed claims 136, 141 and
142. 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.”).
OTHER ISSUES
Prior to further prosecution or disposition of the present application,
the Examiner should ensure that the claims, including 91 and 92, contain
the appropriate values for the variables contained therein.
CONCLUSION
We affirm the rejection under 35 U.S.C. § 103(a) of claims 91, 98, 99
and 103 to 105 over the combined teachings of Challener and Kim; the
rejection under 35 U.S.C. § 103(a) of claims 95 and 100 over the combined
teachings of Challener, Kim and Kluger; the rejection under 35 U.S.C. §
103(a) of claims 96 and 97 over the combined teachings of Challener, Kim,
Kluger and Signer; the rejection under 35 U.S.C. § 103(a) of claims 107 to
118, 123 to 125, 130 to 135, 137 to 140 and 143 to 149 over Challener; the
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