Timm, Administrative Patent Judge, concurring.
I concur fully with the majority decision, but write
separately to express an additional point. Namely that the
difference in water content as expressed in Bivens and Talbot
does not teach away from making the combination.
Appellants argue that because Bivens requires a large
quantity of water and Talbot expressly limits the water to a
minimal amount, the references teach away from the combination
(Brief at 8-9). In arguing that Talbot requires less water than
Bivens, Appellants have oversimplified what the two references
actually teach and suggest. Both Bivens and Talbot describe
grouting compositions with a catalyst component and a resin
component. In the composition of Bivens the water can be
present in either or both components (Bivens at col. 3, ll. 6).
The location is not critical, it is the overall ratio of the
resin formulation to water upon mixing that matters (Bivens at
col. 3, l. 53 to col. 4, l. 2). Talbot describes adding water
to the resin component along with weak acid to generate carbon
dioxide in the resin component (Talbot at col. 2, ll. 6-15).
In light of what Bivens and Talbot teach as a whole, I cannot
say that these references teach away from their combination. If
the combination of the references would not produce an operative
composition useful for its intended purpose, See In re
Sponnoble, 405 F.2d 578, 587, 160 USPQ 237, 244 (CCPA 1969); see
also In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984), or one of the references deliberately
8
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