Appeal No. 2006-0552 3
Application No. 10/167,160
emphasis.
Appellants do not question the propriety of the combinations of references
applied against the claims. Neither do appellants refute the examiner’s position with
regard to the essential correspondence between the claimed coating layers and those
of Proscia; the correspondence being fully set forth in the examiner’s answer (pp. 3 and
7-8). See especially the chart on page 9 of the answer.
Therefore, the primary issue in dispute relates to the obviousness, within the
context of 35 USC 103(a), of the base coating thickness range recited in claim 13.1
With regard to this issue, we entirely agree with the examiner that a base coating
thickness within the claimed range would have been prima facie obvious, within the
purview of 35 USC 103(a), from the teachings of Proscia. As indicated by the examiner,
Proscia (column B, line 62 - column 7, line 18) suggests that film thickness is a result-
effective variable. Accordingly, determination of an optimum value of a result-effective
variable is, prima facie, within the realm of ordinary skill in the art. In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
Moreover, as fully explained in the answer (page 9), while Proscia fails to
disclose a specific thickness for the second high refractive index zone (which
1 We note that no base coating thickness range is recited in claim 20, the only other independent
claim on appeal.
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