Appeal No. 96-1142
Application 07/939,180
dispersions, based on their solids content, is within a
limited range, and that the optimum should be sought within
this range (col. 9, lines 27-30; col. 10, lines 1-4; examples
I to III). In such a case, it may not have been obvious to
one of ordinary skill in the art to determine optimum values
outside this range. See In re Sebek, 465 F.2d 904, 907, 175
USPQ 93, 95 (CCPA 1972). The examiner has not explained why,
in view of the disclosure by Chao, optimizing Chao’s weight
ratio of dispersions, based on the solids content of the
dispersions, in a manner in which the ratio recited in
appellants’ independent claim is obtained, would have been
obvious to one of ordinary skill in the art.
The examiner argues that if one of ordinary skill in the
art wanted to make appellants’ composition, that person could
do so by changing the relative amounts of solids from the
dispersions (supplemental answer mailed on February 24, 1995,
paper no. 12, pages 1-2). This argument is not persuasive
because in order for a prima facie case of obviousness to be
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