Appeal 2007-0617
Application 10/292,321
obvious composition or process does not become patentable simply because
it has been described as somewhat inferior to some other product or process
for the same use. See Gurley, supra.
The discovery of optimum values of a result effective variable in a
known process is ordinarily within the skill of the art. See In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and In re Boesch,
617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); cf. In re Sebek,
465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972) (exception where prior
art suggests range outside of optimum claimed range); and In re Antonie,
559 F.2d 618, 620, 195 USPQ 6, 8-9 (CCPA 1977) (exception where results
were unexpectedly good or parameter optimized was not recognized as a
result effective variable).
Since Appellants argue that the disclosure of reduced efficiencies for
DC in Venkatachalam “teaches away” from the subject matter on appeal
(Br. 3, 5), we presume that Appellants are construing claim 1 on appeal as
limited to the use of DC (see claim 1, clause (iv), “said electrolysis current is
constant”). Therefore we must first properly construe claim 1 on appeal.
During prosecution before the Examiner, we give to the claim
language the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account any enlightenment that may be afforded by the written
description in the specification. See In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997). On this record, we find no
definitions or enlightenment in Appellants’ Specification for the language
“said electrolysis current is constant” (Specification 6:14). We find that
“alternating current” may be an electric, pulsating current in which the
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