Appeal No. 2006-1383 Page 3
Application No. 10/025,065
With reference to examples 1-7 of Löffler, the examiner finds (Answer,
page 3) that Löffler teaches an oil-in-water composition comprising “69.10 -
81.90% water[ ]2, 5 - 20% lipid phase such as Jojoba oil and mineral oil, 0.1 - 5%
oligoester emulsifiers which may be up to 10%, and [0.6 - 0.7%] Aristoflex AVC. .
. .” According to the examiner (id.), the only difference between Löffler and
appellants’ claimed invention, is that Löffler does not teach the use of “0.2 to
0.3% of Aristoflex AVC.” Appellants do not dispute these findings. See Brief,
page 4.
Appellants, however, part company with the examiner when the examiner
asserts (Answer, page 3), “[i]t would have been obvious to a person of ordinary
skill in the art at the time the invention was made to optimize and determine the
particular amount of Aristoflex AVC in the composition, e.g. 0.2 to 0.3% of
Aristoflex AVC.” In contrast, appellants assert (Brief, page 4) that Löffler
merely lists Aristoflex AVC as an ingredient in some examples, but
nowhere discloses what it is, what it does, or why it is present. The
description is totally silent about . . . (Aristoflex AVC). In the face of
this void, there is absolutely no teaching or suggestion to reduce
the amount to 0.2-0.3%. For there to be such a suggestion, there
would have to at least be some disclosure of the reasons why
Aristoflex was included in the first place, or of what it does. No one
would be motivated to “select optimum parameters . . . to achieve a
beneficial effect”, as the Examiner contends, if they do not know
what beneficial effect there is to be achieved, or what parameter is
to be modified.
There is some merit to both sides of this argument, for the examiner is
correct in that the “discovery of an optimum value of a result effective variable in
a known process is ordinarily within the skill of the art,” In re Boesch, 617 F.2d
2 For clarity, we note that the emulsions taught by Löffler “may comprise 5 to 95% by weight . . .
water.” Löffler, column 3, lines 61-63.
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