Appeal 2006-2523
Application 10/206,496
Background of the Invention do not exclude such particles or the use of such
solutions in connection therewith.
Thus, we determine one of ordinary skill in the art would have been
led to combine the prior art methods described in the Background of the
Invention with the same kind of methods disclosed by Adachi, and Adachi
would not have taught away from the claimed invention.6 Indeed, there is
no dispute that titanium alkoxide metallic precursor of Adachi can be used in
the prior art methods described in the Background of the Invention. We
determine that one of ordinary skill would have routinely selected alcohols
from those disclosed by Adachi to be useful with this metallic precursor,
which includes primarily alcohols having four to ten carbon atoms along
with minor amounts of alcohols having one to three carbon atoms.
Indeed, we agree with the Examiner’s contention that one of ordinary
skill would have found in Adachi the teachings that these alcohols,
separately and severally, can provide a hydrolysis rate that will form an
oxide coating on the substrate particle and not in solution. Thus, we
determine that this person would have routinely selected primarily alcohols
with four, five, six, and/or seven alcohols and minor amounts of the other
alcohols from the disclosed ranges of alcohols for this purpose. Similarly,
6 See, e.g., In re Kahn, 441 F.3d 977, 985-89, 78 USPQ2d 1329, 1334-38
(Fed. Cir. 2006) (“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” (quoting In re
Gurley, 27 F.3d 551, 553 [31 USPQ2d 1130, 1131], (Fed. Cir. 1994))); In re
Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1145-46 (Fed. Cir. 2004)
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