Appeal 2007-1365
Reexamination Control 90/006,595
Patent 6,289,548
invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.
KSR at 1742, 82 USPQ2d at 1397.
Consistent with the principles established in Graham and followed in
KSR, the “discovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). In particular, 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). As explained in KSR, “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR at 1742, 82 USPQ2d
at 1397.
On appeal, Applicant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the prior art. Applicant’s may be sustained their burden by showing that
where the Examiner relies on a combination of disclosures, the Examiner
failed to provide sufficient evidence to show that one having ordinary skill
in the art would have done what Applicant did. United States v. Adams, 383
U.S. 39 (1966); In re Fridolph, 134 F.2d 414, 416, 57 USPQ 122, 124
(CCPA 1943) (does the prior art suggest doing the thing which the appellant
has done?)
ANALYSIS
There are three grounds of rejection on appeal, each of which is based
on obviousness under 35 U.S.C. § 103. The Examiner’s rejections and
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