Sometimes mechanical-related inventions create more complications than one would think. In software, if the cited art shows a claimed parameter, for example a sensed parameter used in a software implemented method, it is likely that the parameter is described as somehow affecting the system operation. In mechanical-related inventions, this is not always the case. There are instances where the cited art shows the parameter by happenstance because the parameter has a physical manifestation (e.g., the angle of a corner) However, merely because the cited art shows the parameter does not mean that the art recognizes that parameter as somehow affecting a result to be optimized.

A recent case illustrates some of these aspects. The invention relates to a furnace for heating metal strips. Claim 20, reproduced below, was on appeal. Appeal 2023-002300, Application 16/461,123:

20. A furnace for heating metal strips, comprising:
a housing, wherein a metal strip is transported through the housing in a conveying direction,
a first internal cutting apparatus and a second internal cutting apparatus are provided inside the housing, the second internal cutting apparatus is arranged at a distance to the first internal cutting apparatus and arranged downstream from the first internal cutting apparatus in the conveying direction of the metal strip, said internal cutting apparatuses are actuated simultaneously such as to separate a segment of the metal strip located between the internal cutting apparatuses inside the furnace, the housing has a discharge section with an opening designed in a lateral area of the housing or in a top cover of the housing, such that the separated segment of the metal strip is discharged via the opening out of the furnace in a discharging direction, which extends orthogonally to the conveying direction, the internal cutting apparatuses are angled relative to one another with respect to the discharging direction such that a simultaneous first cut generated by the first internal cutting apparatus that defines a first end of the separated segment and a simultaneous second cut generated by the second internal cutting apparatus that defines a second end of separated segment respectively confine an angle between 5° - 15° in relation to the discharging direction in which the separated segment of the metal strip is discharged out of the furnace, and such that the angle of the cut generated with the first internal cutting apparatus is inclined against the conveying direction of the metal strip and the angle of the cut generated with the second internal cutting apparatus is inclined in the conveying direction of the metal strip.

When an examiner relies on discovering an optimum range of a variable to reject a specific claimed range (or specific claimed value), it can be helpful to remember that the burden is on the Office to properly establish all of the relevant facts. For example, as mentioned in previous blot posts (e.g., here), the examiner must establish that a parameter is a recognized result-effective variable prior to concluding that discovering the optimum or workable ranges for that parameter would have been obvious to one of ordinary skill. In other words, whether or not the cited art could be said to have the parameter, does not automatically make that parameter something to be optimized by routine skill.

The examiner rejected claim 20 based on a combination of references. The first reference disclosed a furnace with many of the claimed features (including the cutting apparatus, etc.). However, a secondary reference was cited for a cutting apparatus in the housing. However, even then claim elements were still missing and so the examiner relied on the secondary reference for teaching cutting apparatuses to cut metal strips at various angles and that it would have been obvious to modify the cited art to cut the workpiece at two different angles as “doing so is the use of known technique to improve a similar devices in the same way,” and that “such a structure would be used
for a transformer core.” Finally, to reach the claimed range of 5 to 15 degrees, the examiner turned to optimization of ranges, since it would allegedly have been obvious to make the angle of the cutter whatever angle the user wants the workpiece to be as an optimum result of a result effective variable.

Considering the above with regard to optimization, merely because the cited art device could cut strips at an angle, that is not a teaching that the angle of the cut has some sort of effect on a particular result.

PTAB explains this in the decision as follows:

… it is not apparent to us, nor does the Examiner adequately explain, how cutting a manufactured transformer piece as taught in [the cited art] establishes that angled cuts of a hot metal strip is a result effective variable or for what result. The Examiner has not established any correlation between a cut angle of a transformer piece disclosed in [the cited art] to the claimed invention, which is directed to unloading or discharging of a separated segment of the metal strip from a furnace. The Examiner is reminded that one needs to establish that a parameter is a recognized result-effective variable prior to concluding that discovering the optimum or workable ranges for that parameter would have been obvious to one of ordinary skill.

So remember, just because the cited art might shows a claimed parameter does not, by itself, qualify as a reason to optimize it.