Appeal No. 2005-1115
Application 09/269,369
the limitation with respect to the system back pressure range of
approximately 45 psi to approximately 55 psi which must be
maintained within the diffuser, which range does not reasonably
appear on this record to be necessarily, inherently provided by
nozzles 27 of diffuser C. I agree with the examiner (answer,
page 3), that, prima facie, one of ordinary skill in this art
routinely working with diffuser C of Jackson would have
reasonably arrived at a workable or optimum range of system back
pressure within the diffuser to maintain the desired gas(es) in
solution. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(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.”). I find no
evidence or argument in the record establishing the criticality
of the claimed range.
Therefore, based on the substantial evidence in
Jackson, I would affirm the ground of rejection of appealed
claims 1, 3 and 4 under 35 U.S.C. § 103(a) because as a matter of
law, the claimed “diffuser” encompassed in each of these claims
would have been obvious to one of ordinary skill in this art over
diffuser C described by Jackson.
The claimed invention encompassed by claims 5 and 13
requires that “a pair of elbow portions substantially [define] a
semicircle portion of each of said nozzles.” I could not find a
definition for the term of degree “substantially” in the context
of a nozzle pattern in the written description in the
specification, and thus a reasonable, ordinary meaning of the
claim language “substantially . . . a semicircle portion”
includes within its scope, semicircular per se to largely but not
wholly semicircular. See Morris, supra; York Prods., Inc. v.
Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73, 40
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