Appeal No. 2007-1530
Application 10/095,112
“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1368, 82 USPQ2d 1321, 1336 (Fed. Cir. 2007) (quoting Boesch,
617 F.2d at 276, 205 USPQ at 219). “[I]t is not inventive to discover the optimum
or workable ranges by routine experimentation.” Pfizer, 480 F.3d at 1368,
82 USPQ2d at 1336 (quoting In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d
1362, 1365 (Fed. Cir. 1997) and In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955)). See also In re Luck, 476 F.2d 650, 652-53, 177 USPQ 523,
525 (CCPA 1973) (holding that the use of routine testing to identify optimum
amounts of silane to be employed in a lamp coating, without establishing a critical
upper limit or demonstrating any unexpected result, lies within the ambit of the
ordinary skill in the art). This principle is applicable even where, as here, the
claim recites a range that does not embrace the value or range of values given in
the reference disclosure. See Aller, 220 F.2d at 455, 459, 105 USPQ at 234, 237
(holding the claimed process, which requires a temperature between 40°C and
80°C and an acid concentration between 25% and 70%, obvious over a reference
process that differed from the claimed process only in that the reference process
was performed at a temperature of 100°C and with an acid concentration of 10%).
The upper end point (i.e., 60 volume percent of ceramic material) of
Appellants’ claimed range is relatively close to the lower end point of Pyzik’s
preferred range of 70 to 96 volume percent for the ceramic material. Furthermore,
the fact that Pyzik describes this range as preferred suggests that it is possible,
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