“In his argument that ‘mere routine experimentation’ was involved in determining the optimized set of characteristics, the solicitor overlooks the last sentence of 35 U.S.C. § 103 . . . Here we are concerned with the question of whether the claimed invention would 14 HONEYWELL INT’L INC. v. MEXICHEM AMANCO HOLDING S.A. have been obvious at the time it was made to a person having ordinary skill in the art—not how it was achieved.” (internal citation omitted)
How later courts described this case
- “In his argument that ‘mere routine experimentation’ was involved in determining the optimized set of characteristics, the solicitor overlooks the last sentence of 35 U.S.C. § 103 . . . Here we are concerned with the question of whether the claimed invention would 14 HONEYWELL INT’L INC. v. MEXICHEM AMANCO HOLDING S.A. have been obvious at the time it was made to a person having ordinary skill in the art—not how it was achieved.” (internal citation omitted)
- an obviousness analysis not concerned with “how [an invention] was achieved.”
Written by the judges who cited it.
The opinion
RICH, Judge
(dissenting):
I respectfully dissent, believing that the rejection under § 103 was well-founded.
Appellant, in his own specification and in the Damicone affidavit, by one who worked on the invention, makes it plain that, the desired properties of the furniture platform being known, “Anyone skilled in the elastomeric compounding and processing field would know” how to compound rubber to get the properties. Rubber compounded to meet the requirements appears to have been already known. * So were rubber chair bottoms. The search for the best one was routineering, the desiderata were obvious, and the way was known. The claimed subject matter was obvious to those skilled in the rubber compounding art.
Appellant did not discover permanent set or cold flow, i. e., sag after use. Anyone who has seen an old rubber band knows that it is desirable to keep that property to a minimum for as long as possible. There is no magic in the 15% limitation; it is merely the maximum, to be tolerated. Appellant prefers 5% and, if attainable, would no doubt prefer none. I think it is very obvious that low permanent set is desirable. Nobody knows that the life of the furniture plat *856 form has been extended up to 15 years; that is a mere expectation which appellant forcasts on the basis of accelerated tests conducted during a short period.
Appellant’s specification, after stating his four essential “physical property” ranges, states: “The compounding of rubber and other elastomers to the above specifications is well known in the art,” as the board noted in finding the rubber sheet to be “old.”