Appeal 2006-3315
Application 10/309,321
the thickness range of 5-20 mm, this is a result-effective variable that can be
optimized as shown before” (Answer 18-19). However, it is generally not a
matter of obviousness for one of ordinary skill in the art to optimize a result-
effective variable outside the range disclosed in the prior art. In re Sebek,
465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972). Goldsmith, and the
added reference to Bacon cited against claims 5 and 7, do not remedy this
basic deficiency of Abe.
We will sustain the Examiner’s § 103 rejection of claims 2-4 and 6
over Goldsmith in view of Ciora, as well as claims 5 and 7 over Goldsmith
in view of Ciora and Bacon.2 Appellants do not dispute the Examiner’s
factual determination that Goldsmith discloses a ceramic filter comprising a
substrate with successive multiple layers comprising titania having
decreased particle size. Since the separation layer of Goldsmith rejects latex
particles of 0.49 μm, we concur with the Examiner’s reasonable conclusion
that Goldsmith’s separation layer would necessarily have a porosity of less
than 1 μm in accordance with the claimed range. Also, while Goldsmith is
silent with respect to the thickness of the separation layer, we fully agree
with the Examiner that Ciora establishes the obviousness of employing a
separation layer having a thickness within the claimed range. In particular,
“Ciora teaches that the thickness of the ceramic layers are typically
5-100 microns, with the second layer being thinner (column 7[,]
2 Since Appellants do not present separate substantive arguments for
claims 3-7, we will limit our consideration to the Examiner’s rejection of
claim 2 over Goldsmith in view of Ciora.
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