Appeal No. 94-4172
Application 08/001,854
to achieve patentees’ objective would correspond to the amount
necessary to achieve the appellants’ different objective.
Further, we find nothing and the examiner points to nothing in
the applied references which evinces that the amount of colloidal
silica needed as a matting agent in order to prevent sticking as
desired by Inoue would correspond to any of the coverage values
embraced by the appellants’ claimed range. For all we know, an
artisan with ordinary skill would have considered coverage values
of the type here claimed to be far in excess of the colloidal
silica amount needed to achieve patentee’s sticking-prevention
objective.
In short, to reach the minimum coverage value claimed by the
appellants, it would be necessary to increase the colloidal
silica amount used in the protective layer of Inoue’s Example 1
by almost 70%. This is far in excess of the amount exemplified
by patentee, and no evidence has been proffered by the examiner
to show that such an increase would have been the consequence of
optimizing Inoue’s colloidal silica parameter in order to achieve
his sticking-prevention objective. See In re Sebek, 465 F.2d
904, 907, 175 USPQ 93, 95 (CCPA 1972). It follows that we cannot
sustain the examiner’s § 103 rejection of claims 1 through 3 and
5 through 9 as being unpatentable over Inoue in view of Muenter
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