Getting new rejections in an appeal to the Board

In an appeal to the Board, the appellant should recall that new rejections can be made. This happened in Ex parte Johnson, a case related to GE Healthcare in Princeton, New Jersey :

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of all the claims on appeal under 35 U.S.C. § 103(a). Claims 1-4 are rejected under 35 U.S.C. 103(a) as being unpatentable over the combination of Homestad and Malthe-Sorenssen.

In KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007), the Supreme Court emphasized that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” In this regard, the obviousness analysis permits reliance upon “common sense” or the knowledge of the skilled artisan to bridge gaps in prior art‟s explicit teachings. Id. at 420-21.
“[D]iscovery 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 (CCPA 1980) (citations omitted). However, a particular parameter must first be recognized as a result effective variable before optimization can be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 621 (CCPA 1977).
“[W]here the general conditions of a claim 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 (CCPA 1955).(...)

Substituting one art recognized equivalent for another is obvious. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”); In re Fout, 675 F.2d 297, 301 (CCPA 1982).(...)

The determination of the optimum or workable ranges of result-effective variables is normally obvious. See In re Antonie, 559 F.2d at 620. Appellants have provided no evidence that the claimed range of pH reflects anything more than “the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 419. (...)

With regard to claims 3 and 4, it is well established that different temperatures will generally not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (Claimed process which was performed at a temperature between 40° C and 80° C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.) (...)

“Obviousness-type double patenting is a judge-made doctrine that prevents an extension of the patent right beyond the statutory time limit. It requires rejection of an application claim when the claimed subject matter is not patentably distinct from the subject matter claimed in a commonly owned patent.” In re Berg, 140 F.3d 1428, 1431 (Fed. Cir. 1998).