Appeal No. 2005-0222 Page 5
Application No. 09/923,629
variables that are known in the prior art as being result effective. See In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Whether an
obviousness conclusion is appropriate, however, depends on what the prior art
discloses with respect to the parameter in question, and whether any such
experimentation comes from the teachings in the art. See In re Sebek, 465 F.2d
904, 906-07, 175 USPQ 93, 95 (CCPA 1972); In re Waymouth, 499 F.2d 1273,
1276, 182 USPQ 290, 292 (CCPA 1974). Where the prior art discloses a range
of values and suggests that the optimum range should be sought within that
range, a parameter outside of that range may not be obvious. See id.
In the instant case, step (e) of claim 1 recites that the transesterification is
conducted at a temperature of 115°C to 145°C from a time period of from 3 to 10
hours; whereas, Hunt ’252 discloses that the transesterification can be done at
temperatures between about 150°C and about 240°C, in reaction times of 10
minutes or more, such as 1 to about 3 hours.2 Thus, the claimed temperature is
below the temperature range taught by Hunt ’252, and the claimed reaction time
is the upper limit of that disclosed by Hunt. In example 1 of the Hunt ’252 patent,
the transesterification is performed at 200°C in a reaction time of 2 hours, see
Hunt ’252, Col. 10. There is nothing in the Hunt ’252 reference relied upon by
the examiner to teach the claimed transesterification conditions required by step
(e), that would lead the ordinary artisan to look below the temperature range
2 The rejection only cites the Hunt ’252 patent to address the limitations of step(e) of claim 1.
Thus, we need not address the teachings of the Hunt ’669 patent.
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