Appeal 2007-3962
Application 10/005,846
(Reply Br. 15), and that the concentration would not have been recognized
as a “result-effective” variable that could be optimized (Reply Br. 16-18).
The issue is: Have Appellants overcome the rejection by showing that one
of ordinary skill in the art would not have recognized the concentration of
elastomer or EPR as a result-effective variable to be optimized?
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”
In re Kahn, 441 F.3d 977, 985-86, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006)
(emphasis omitted).
Optimization of a variable which is recognized in the prior art as a
result-effective variable would ordinarily be within the skill in the art. In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Whether
optimization of a parameter would have been prima facie obvious depends
upon what the prior art discloses with respect to that parameter.
Here, Kondo describes forming a microporous sheet for the same
purpose, a battery separator, and describes a range of concentrations (less
than 30%) encompassing the claimed concentration (less than 10%). The
fact that Kondo discloses a range of concentrations rather than specific
values of concentration indicates, in itself, that the concentration was viewed
as a result-effective variable. The obviousness of the optimization of a range
or other variable within the claims flows from the “normal desire of
scientists or artisans to improve upon what is already generally known.”
In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-383 (Fed. Cir.
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