Appeal 2006-2523
Application 10/206,496
this person would have used one or more alcohols having one to three
carbon atoms for the same purpose where the metallic precursor is a silicon
alkoxide, a three carbon alcohol falling within the claimed range of alcohols.
See generally, Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807,
10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989) (“That the ‘813 patent discloses
a multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose.” (citations omitted)).
We further agree with the Examiner’s contentions that the combined
knowledge of the prior art methods described in the Background of the
Invention and the teachings of Adachi would have reasonably led one of
ordinary skill to use an amount of alcohol, a temperature rate and a rate of
addition of water which result in a workable or optimum hydrolysis rate for
the particular metallic precursor. See, e.g., In re Aller, 220 F.2d 454,
456-58, 105 USPQ 233, 235-37 (CCPA 1955) (not inventive to discover by
routine experimentation optimum or workable ranges for general conditions
disclosed in the prior art). We determine the major amount of alcohol in a
solution used with a titanium alkoxide precursor would be at least a four
carbon alcohol and thus the boiling point of the solution would be above the
boiling point of a solution where the alcohol is ethanol as the primary
constituent, that is, above the boiling point of ethanol. Similarly, where the
major amount of alcohol used with a silicon alkoxide precursor is the three
(prior art not teach away if the “disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”).
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