Appeal No. 96-2939
Application No. 08/205,423
agent is potassium. See column 2, line 56. We find no
disclosure or suggestion by Lowen to use copper ions in any
compound as required by the claimed subject matter. We
conclude that the prior art relied upon by the examiner gives
no indication which cations are critical and no direction as
to which of the many possible choices of cation is likely to
be successful. Accordingly, the choice of copper would have
fallen within the “obvious to try” test. See In re O’Farrell
853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Based upon the above analysis, we have determined that
the examiner’s legal conclusion of obviousness is not
supported by the facts. “[W]here the legal conclusion of
obviousness is not supported by facts it cannot stand.” In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
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