Appeal No. 2004-2196
Application 09/902,055
(“[W]e agree with the Solicitor that the prior art would have suggested ‘the kind of
experimentation necessary to achieve the claimed compositions . . .’ This accords with the rule
that discovery of an optimum value of a result effective variable in a known process is ordinarily
within the skill of the art. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); In re Aller,
220 F.2d 454, 105 USPQ 233 (CCPA 1955) ”); In re Aller, 220 F.2d 454, 456-58, 105 USPQ
233, 235-37 (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.”).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Ludwig and Moriarity
with appellants’ countervailing evidence of and argument for nonobviousness and conclude that
the claimed invention encompassed by appealed claims 1 and 3 through 19 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
We reach the same conclusion with respect to the ground of rejection of appealed claims
1, 3 through 7 and 9 through 19 under 35 U.S.C. § 103(a) over the combined teachings of Bayer
and Moriarity because, as we pointed out above, because appellants rely on the arguments
presented with respect to the ground of rejection based on the combined teachings of Ludwig and
Moriarity (brief, page 8).
The examiner’s decision is affirmed.
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