Appeal 2006-1219
Application 10/636,148
unexpected results that can be clearly attributed to
the claimed degree of crosslinking. No such
unexpected results are presented on the record
[Answer 6].
The Examiner’s argument suggests that the amount of crosslinker is a
result effective variable that can be optimized to Appellants’ claimed range
by the person with ordinary skill in the art. There is long standing legal
authority to support the general proposition that it would have been obvious
to determine an optimum or workable value of an art recognized, result
effective variable. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936-37 (Fed. Cir. 1990); In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955). However, the predecessor to our reviewing court stated:
[W]hile it may ordinarily be the case that the
determination of optimum values for the
parameters of a prior art process would be at least
prima facie obvious, that conclusion depends upon
what the prior art discloses with respect to those
parameters. Where, as here, the prior art
disclosure suggests the outer limits of the range of
suitable values, and that the optimum resides
within that range, and where there are indications
elsewhere that in fact the optimum should be
sought within that range, the determination of
optimum values outside that range may not be
obvious [In re Sebek, 465 F.2d 904, 907, 175
USPQ 93, 95 (CCPA 1972)].
In this case, the Examiner has acknowledged that “Meitzner . . . does
not expressly disclose the claimed amount of the crosslinker, and, in fact, the
preferred embodiments of Meitzner call for at least 4 % of crosslinker”
(Answer 5). Meitzner notes that “using a sulfonated styrene-divinylbenzene
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