Appeal No. 2005-0355 Page 5
Application No. 10/080,714
the recesses more efficiently (answer, page 3). As for the recited angle ", the examiner
contends that it would have been obvious to one of ordinary skill in the art at the time of
appellants’ invention to have set the average angle within the range claimed,
since it has been held that discovering an optimum value of a result
effective variable involves only routine skill in the art and it would appear
that the average angle such as one in Miyasaka would perform equally as
well [answer, page 3].
Discovery of an optimum value of a result effective variable is ordinarily within the skill
of the art. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) and
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). However, the
examiner has not pointed to any indication in either Mayumi or Miyasaka that the angle
" recited in appellants’ claim 1 was recognized within the art at the time of appellants’
invention to be a result-effective variable. See In re Antonie, 559 F.2d 618, 620, 195
USPQ 6, 8-9 (CCPA 1977).
Relying on Miyasaka’s teaching of the use of shots having a diameter size of 20
to 200 micrometers, which includes the diameter of about 200 micrometers disclosed by
appellants on page 2 of their specification, and a concave portion depth of 1.2
micrometer or smaller (col. 9, lines 5-10), 0.6 micrometer or smaller (col. 10, lines 8-11),
3.0 micrometer or smaller (col. 11, lines 16-20) or 0.8 micrometers or smaller (col. 13,
lines 4-7), which includes the preferred depths of less than 0.5 micrometer and about
0.2 micrometer disclosed by appellants on page 1 of their specification, the examiner
further determines that Miyasaka’s concave portions or recesses will have an angle " of
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