Appeal No. 2006-1738 Page 9
Application No. 10/059,564
As an aside, we note that the claim language reciting a density of “approximately
1.033 g/cc” indicates an express intention to capture compositions that fall outside the
precise numerical density recited in the claim. Thus, even if the 500 kg/cm2 were
utilized to compress cellulose, and a composition was obtained having a density that
was less than, and not exactly, 1.033 g/cc, such composition could still meet the
claimed limitation.
Appellant repeatedly emphasized in the Briefs that the cited prior art did not
teach or suggest investigating density as a parameter to achieve improved results.
See, e.g., Appeal Brief, page 9; Reply Brief, page 7. However, it was not disputed by
appellant that density is a function of compacting pressure, and the latter is very
definitely described in Minagawa as a variable of the compacting process. Moreover,
appellant’s argument that the references do not provide any hint that the density
parameter is to be optimized to achieve the alleged “unexpected results” (Reply Brief,
lines spanning pages 5-6) is directed to the intended use (i.e., feeding preference or the
ability to cram more bait into a bait station) of the claimed composition, and the claim is
not so limited.
In the Reply brief, Appellant urged that exception recognized in In re Antonie,
559 F.2d 618, 195 USPQ 6 (CCPA 1977), was applicable to the appeal here, i.e., that
while discovery of an optimal value of a variable in a known process is normally
obvious, there is an exception where a parameter had not been recognized as being a
“result-effective variable.” However, the facts of this appeal can be distinguished. In re
Antonie, 559 F.2d at 619,195 USPQ at 8, involved a parameter (“ratio of tank volume to
contactor area”) recited in the claimed invention that had not been mentioned, or even
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