Appeal 2007-0672
Application 10/399,702
or obvious structure as a claimed apparatus renders a claimed apparatus
unpatentable under Section 102 as long as it is capable of performing the
claimed process or function. In re Yanush, 477 F.2d 958, 959, 177 USPQ
705, 706 (CCPA 1973); Ex Parte Masham, 2 USPQ2d 1647, 1648 (Bd. Pat.
App. & Int. 1987).
Official Notice
The Appellant may challenge Official Notice taken by the examiner
and demand production of evidence in support thereof, provided such
challenge is accompanied by adequate information or argument that, on its
face, creates a reasonable doubt regarding the circumstances justifying the
official notice. See In re Boon, 439 F.2d 724, 728, 169 USPQ 231, 234
(CCPA 1971).
Obviousness
Anticipation is the epitome of obviousness See In re Skoner 517 F.2d
947, 950, 186 USPQ 80, 82 (CCPA 1975); In re Pearson, 494 F.2d 1399,
1402, 181 USPQ 641, 644 (CCPA 1974).
The discovery of an optimum value of a result effective variable (in
this case, the optimum ) is ordinarily within the skill of the art. See In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) and In re
Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As stated in In
re Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996):
This court and its predecessors have long held, however, that
even though applicant's modification results in great
improvement and utility over the prior art, it may still not be
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