“[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.”
Background / Facts: The patent on appeal here from reexamination at the PTO is directed to air or gel cushions for shoes to absorb the shock on a runner. The patent describes a variation of a shoe outsole with a resilient member that allows relative motion between upper and lower portions in the “unloaded state” to absorb oblique shoe loads, but compresses and engages to prevent relative motion in the “loaded state”—i.e., when pressure is applied to the outsole. In this regard, the claims specify the amount by which the resilient member deforms in the loaded configuration, with claim 6 claiming greater than 20% deformation and claim 7 claiming greater than 50% deformation.
Issue(s): Whether the specified percentage the outsole deforms in the loaded position would have been obvious even though the specific percentages are not explicitly disclosed in the prior art.
Holding(s): Yes. “[A]s the patent examiner found, it would have been obvious to one having ordinary skill in the art at the time to construct resilient members that achieve this deformation percentage, since ‘where the general conditions of a claim are disclosed in the prior art,’ as here, ‘it is not inventive to discover the optimum or workable ranges by routine experimentation.’”