Appeal No. 2006-0145
Application 09/639,850
than 75% of the elastic limit of the diaphragm. While Mastromatteo may suggest that the stress on a
diaphragm should stay within the elastic limit of the diaphragm, nothing therein even hints at keeping
the stress to less than 75% of the elastic limit of the diaphragm.
The examiner recognized this deficiency but asserted that this “optimum” stress “would be
determined by those having ordinary skill in the art through routine experimentation” (answer-page
4). The examiner further asserted that the stress limit on the diaphragm is a “result-effective
variable” which can be optimized to “prevent permanent deformation to the diaphragm” (answer-
page 8). We disagree.
It is true that the discovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of an artisan. In re Boesch, 617 F.2d 272, 205 USPQ 215
(CCPA 1980); Also see In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), In re Aller, 220
F.2d 454, 105 USPQ 233 (CCPA 1955). However, we do not find the maximum stress (claims 6 and
7) or the stress (claim 8) of the instant claimed invention to be a “result effective variable.” What is
the result observed as this “variable” is adjusted? If one waits for the diaphragm to break, this
breakage point would appear to establish the elastic limit of the diaphragm, and the stress that would
cause it. But it is not clear to us why the examiner contends that it would have been obvious to
“optimize” the stress at “less than 75% of the elastic limit,” or at a point that “does not exceed 75%
of the elastic limit,” as claimed. It is also not clear what type of “routine experimentation” by
artisans is envisioned by the examiner.
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