Appeal 2006-1847
Application 10/295,813
any overlap of any of the claimed ranges is additional evidence of the result
effective nature of the variables specified in appellant’s independent claims,
and that one of ordinary skill would have found it obvious to optimize the
inner structure of the heat conduction pipe. In the event that the Examiner’s
latest calculations are also found to be in error, we merely point out that an
overlap of all ranges is not required under the Examiner’s premise that the
claimed parameters are result effective. See Woodruff, 919 F.2d at 1577, 16
USPQ2d at 1936 (Fed. Cir. 1990). In Woodruff, three of the four claimed
parameters were overlapped by the prior art, while one fell outside the range
of the prior art. Presumably that is the situation here.
CONCLUSION OF LAW
Given the unrebutted result effective variable findings with respect to
the parameters in the independent claims, it is our conclusion of law that the
subject matter of claims 1, 4, 6, 7, 9-13, 20 and 25 on appeal would have
been obvious from the applied prior art as mere optimizations of well
recognized result effective variables.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Although the Examiner refers to claim 5 at 13 in the Answer, the
Examiner fails to include a rejection of this claim which includes the prior
art teaching of Bandai in the collective teachings of the references.
Accordingly, we hereby enter a rejection under 35 U.S.C. § 103 of claim 5
as unpatentable over Tsuzaki in view of Chiang, Suzuki and Bandai.
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