Appeal 2006-1847
Application 10/295,813
therefore finds that every claimed range recited in claim 1 is found to be
known in the prior art to be result effective, and the characterization or the
optimization of these parameters is routine experimentation that would have
been obvious to one of ordinary skill at the time the invention was made.
The examiner further states that the fact that Chiang and Suzuki disclose
overlapping ranges for at least some of the parameters claimed further
buttresses his finding that the parameters are result effective variables.
Finally, Bandai is cited to show crossing or secondary grooves which
extend in the same direction as the primary grooves relative to the tube axis.
According to Bandai, this results in an improvement of the balance of the
condensing property and evaporation property of the heat exchange tube.
PRINCIPLES OF LAW
“A claimed invention is unpatentable if the differences between it and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the pertinent art.” In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329,
1334-35 (Fed. Cir. 2006) citing 35 U.S.C. § 103(a) (2000); Graham v. John
Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 467 (1966). “The ultimate
determination of whether an invention would have been obvious is a legal
conclusion based on underlying findings of fact.” Id. (citing In re
Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir. 1999)).
In assessing whether subject matter would have been non-obvious
under § 103, the Board follows the guidance of the Supreme Court in
Graham v. John Deere Co. 383 U.S. at 17, 148 USPQ at 467. The Board
determines “‘the scope and content of the prior art,’” ascertains “‘the
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