Appeal 2007-0128
Reexamination Control 90/006,208
Patent 5,573,648
well recognized that the “discovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill in the art.” In re Boesch,
617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Specifically, where the
general conditions of the claims are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation. In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case,
Dempsey exemplifies the use of a larger diameter than claimed by Atwood, yet
Grot expressly teaches one of ordinary skill in the art to reduce the amount of
catalyst
used in forming an electrode. One of ordinary skill in the art would recognize that
a
smaller diameter electrode, having Grot’s desired uniform structure, would allow
for a reduction in the total amount of catalyst used. Thus, in addition to the
motivation discussed above, we also conclude that the one of ordinary skill in the
art desiring the reduction in amount of catalyst used in the electrodes would
conduct routine experimentation to achieve the desired dimensions, which are
acknowledged to be result effective variables.
Atwood does not allege any improved performance or unexpected benefit
arising from the claimed membrane or electrode dimensions. Based upon the
evidence presented, we conclude that the Examiner did not err in rejecting Atwood
claim 13 as obvious over the prior art.
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