Appeal No. 2004-2209 7
Application No. 09/406,445
35 U.S.C. § 112, as appears to be mentioned in the examiner’s answer, we hold that
such a rejection is not before us on appeal.
With respect to the obviousness rejection of the first group of claims, i.e., claims
15 -21, 23, and 24, we point out that neither cited reference discloses the claimed
friction surface to guide rail pressure of less than 50 psi. We note that the examiner has
stated that this limitation is a result effective variable. We recognize the examiner’s
reliance on In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) wherein
it was held that “discovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” We agree with the holding in this case,
but we must emphasize that the prior art must recognize the process and the place of
the variable in the process. The examiner has not cited any evidence that the prior art
recognizes the importance or criticality of limiting the pressure by which the friction
surface acts on the non-metallic guide rails. Without such evidence, we are unable to
agree that contact pressure of less than 50 psi in the present case is a result effective
variable.
With respect to the second group of claims, i.e., claims 25-31, 33, and 34, we
note that these claims require the coefficient of friction between the guide rail and the
friction surface to be approximately 1.0. As our findings, supra, indicate, the UK patent
to Winkler expressly teaches that a coefficient of friction above 0.85 is exceedingly
difficult to attain. Thus, not only is there no apparent teaching or suggestion that would
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