Appeal No. 96-2341
Application 08/389,554
which has undissolved inorganic salt such that the composition
is suitable for its intended purpose of scouring, and which is
still shear thinnable. As stated above, the examiner argues
that one of ordinary skill in the art would have been
motivated to dilute Munro’s composition to obtain greater
coverage or less abrasion, and would have known that a
dilution would be reached at which the composition is no
longer shear thinnable. The examiner, however, has provided
no evidence or reasoning as to why Munro would have motivated
one of ordinary skill in the art to use a water concentration
as high as about 15 wt% to about 70 wt% as required by
appellants’ claims, and would have provided such a person with
a reasonable expectation that a composition containing that
amount of water would be shear thinnable. See In re Vaeck,
947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In
re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed.
Cir. 1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645,
648 (Fed. Cir. 1985). On this record, the guidance for use of
such a water concentration comes solely from the description
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