Appeal No. 1996-2811
Application 08/402,670
improper “obvious to try” approach to patentability
determinations. Of the thousands of ceramic materials
available in the prior art, what would have led one of
ordinary skill in the art to the specific zirconium-based
ceramic material
described in the applied prior art references as being for
cutting tools (see, e.g., Ghosh ‘282, col. 2, lines 67-68)?
Moreover, given the particular problems in the
photographic film guiding art confronted by appellants, we see
no basis upon which to conclude that it would have been
obvious to one of ordinary skill in the art to combine the
applied prior art references relied upon by the examiner so as
to result in a guide rail (claims 1-9) or guide rail insert
(claims 10-18) suitable for “guiding photographic film and
paper without adverse effect on said film and paper,” as is
specified in the claims before us on appeal. In this regard,
we note that after considering the entirety of appellants’
disclosure to gain an understanding of what the inventors
actually invented and intended to encompass by the appealed
claims, we are of the view that the preambular recitations in
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