Appeal No. 95-0331
Application No. 07/626,904
subject rejection for the reasons fully detailed in In re
Emert, 124 F.3d 1458, 44 USPQ2d 1149 (Fed. Cir. 1997).
Furthermore, the record before us on this appeal necessarily
leads us to a “one-way” analysis of this rejection since the
only arguments presented by the appellants concern a “one-way”
as opposed to a “two-way” determination.
Regarding these arguments, we discern no persuasive merit
in the appellants’ contention that, because the catalyst
claimed by Boardman and the catalyst disclosed by Drahnak are
dissimilar, it would not have been obvious to replace the
former with the latter. In our view, it would have been
obvious for one with ordinary skill in the art to replace the
claimed catalyst of Boardman with the catalyst of Drahnak in
order to obtain the disclosed advantages associated therewith
(e.g., see lines 47 through 57 in column 2 and lines 53
through 61 in column 3). Moreover, there would have been a
reasonable expectation that the replacement would have enjoyed
success since Drahnak expressly discloses using his catalyst
for effecting hydrosilation reactions of the type claimed by
Boardman (as well as by the appellants). In re O’Farrell, 853
F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007