Appeal No. 96-0419
Application No. 07/928,063
waving effective amount of a reducing agent.” Trying each of numerous possible choices until one
possibly arrives at the claimed invention without direction or guidance from the prior art amounts to
“obvious to try,” which is not the standard under § 103. See In re O’Farrell, 853 F.2d 894, 903, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988).
Accordingly, the rejection of claims 1, 3, 4, 9 and 10 under 35 U.S.C. § 103 as unpatentable
over Miki or Isobe is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 3, 7 and 9 under 35 U.S.C. §
112, second paragraph, as indefinite, is reversed; to reject claims 1, 3, 4 and 7 through 10 under 35
U.S.C. § 103 as being unpatentable over Amari in view of Merck is reversed; and, to reject claims 1,
3, 4, 9 and 10 under 35 U.S.C. § 103 as being unpatentable over Miki or Isobe is reversed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
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