Appeal 2007-1384
Application 10/122,683
contamination (Affidavit 2-3, ¶12; Br. 4). However, the record before us
contains no evidence that such concerns were based on scientific study as
opposed to unfounded assumption.
In any event, the fact remains that the use of KOH as an electrolyte
and NaCl solution as a humidifier unquestionably would have been desirable
whereas the potential for contamination resulting from this use of different
salts would have been merely a possibility. These circumstances support a
conclusion that, at a minimum, it would have been obvious for the artisan to
try using these different salts in the manner proposed by the Examiner.
The Supreme Court has recently clarified that a claim can be proved
obvious merely by showing that the combination of elements was obvious to
try. In this regard, the Supreme Court explained that, “[w]hen there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.”
KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1397
(2007).
In this instance, there are only two solutions to the problem of salt-use
in an oxygen detecting apparatus of the type under consideration. In the first
solution, the same salt is used whereby the possibility of contamination is
avoided but at the expense of optimization for both the electrolyte and the
humidifier. In the second solution, different salts are used whereby the
electrolyte and the humidifier are both optimized but there is a possibility of
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013