Appeal No. 2006-0204 Page 7
Application No. 09/896,052
discovery of an optimum value of a variable in a known process (or in this case, a
composition) is normally obvious. In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955); see also In re Boesch, 617 F.2d 272, 276, 205 USPQ 215,
219 (CCPA 1980). However, there is at least one exception to this general rule
where Athe parameter optimized was not recognized to be a result effective
variable,” In re Antonie, 559 F.2d 618, 621, 195 USPQ 6, 8 (CCPA 1977).
In our view, there is at least some evidence of record supporting the
examiner’s conclusion that the claimed invention would have been obvious to
one of skill in the art, but that evidence has not been addressed or presented in a
manner that gives appellants a full and fair opportunity to respond. Accordingly,
we vacate the rejection of record, and remand the application to the examiner to
take appropriate action. On return of the application, we encourage the examiner
to reconsider Lee for all that it teaches, and to determine what was known in the
art at the time of the invention with respect to such things as the physical
parameters of drugs in chewable tablets, etc. Any further communication from
the examiner containing a rejection of the claims should provide appellants with a
full and fair opportunity to respond.
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