Appeal No. 2006-1587
Application No. 10/020,768
The Examiner concludes that the glass fiber content would have
been obvious to one having an ordinary level of skill in this
art because it is “a result effective variable [that] is
optimizable to Applicant’s claimed range” (Answer, page 14).
The Examiner’s obviousness conclusion is supported by long
standing legal authority. 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). Compare In re
Sebek, 465 F.2d 904,907, 175 USPQ 93, 95 (CCPA 1972).
In this instance, the claimed glass fiber content of less
than 50% by weight and Heidweiller’s lowest range glass fiber
content of 50% by weight are “so close that prima facie one
skilled in the art would have expected them to have the same
properties.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 782-
83, 227 USPQ 773, 779 (Fed. Cir. 1985).
Comment [s5]: This missing text was
Appellant argues that “it is the obviousness or in the brief.
nonobviousness of the subject matter that must be determined and
it is here that secondary considerations are relevant to the
determination of patentability” (Brief, page 9). Further,
Appellant argues “secondary considerations all weigh on the side
of finding nonobviousness and in fact support the patentability
of the present invention” (id.). In this regard, Appellant
argues that “Heidweiller set the ‘industry standard’ for glass
fiber content in reinforcing mat products at greater than 50%
[sic, equal to or greater than 50%] back in 1971” (id.).
Appellant contends that this “standard remained in place through
at least 1996 when Helwig et al. [Helwig ‘843] filed for
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