Appellant loses on 103 in Ex parte Klotzer
Construing a means-plus-function claim limitation is a two-step
process. First, the claim must be analyzed to determine whether the claim language actually invokes the provisions of 35 U.S.C. § 112, sixth paragraph. See Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000) (“If a claim element contains the word „means‟ and recites a function, th[e] court presumes that element is a means-plus-function element under § 112, ¶ 6. . . . That presumption falls, however, if the claim itself recites sufficient structure to perform the claimed function”). The second step is to “determine what structures have been disclosed in the specification that correspond to the means for performing that function.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“[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).
“[T]he discovery of an optimum value of a variable in a known process is normally obvious.” Exceptions to this rule include (1) the results of optimizing a variable were unexpectedly good and (2) the parameter optimized was not recognized in the prior art as one which would affect the results. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
With respect to claim 3, 11, 12, and 16 to 20, the Examiner relies on Nauman for the disclosure that it is well known to those of ordinary skill in the art to optimize “residence time [see pages 539, 540,576 and 577 in chapter 15] and mixing time [see pages 25-28, in section 1.5 in chapter 1] in chemical reactors designs, optimization and scale up.” (Ans. 5.) Appellants have failed to provide evidence that one of ordinary skill in the art would not have been led by Nauman to optimize the mixing and reaction times or that these parameters optimized were not recognized in the prior art as one which would affect the results.
The concept of Bodenstein number arises:
The Examiner finds that “Bodenstein number is related to physical property of the reactor and their conditions. The above cited references teach the conditions in the reactor are optimizable. Therefore, Bodenstein number is invariably part of the disclosed processes.” (Ans. 6.) Appellants have failed to provide evidence or supporting calculations of the Bodenstein number of Otterbach and have failed to establish with supporting evidence that one of ordinary skill in the art would not have recognized that the Bodenstein number of the tube reactor of Frosh is an optimizable variable known to those of ordinary skill in the art.