Appeal No. 1997-0330
Application 08/493,758
through the claimed invention and those of the prior
art, In re Klosak, 59 CCPA 862, 455 F.2d 1077, 173 USPQ
14 (1972); and (2) that the difference actually
obtained would not have been expected by one skilled in
the art at the time of invention, Id.; In re D'Ancicco,
58 CCPA 1057, 439 F.2d 1244, 169 USPQ 303 (1971).
In re Freeman, 177 USPQ 139, 143 (CCPA 1973).
2
Appellants (brief, p. 10 ) argue that there is a difference between the
claimed electrolyte and that of the cited art and direct our attention to three examples on pages
4 and 5 of the specification. Considering that the issue is whether there is an unexpected result
associated with electrolytes having a fluoride complex in concentrations exceeding, as opposed
to not exceeding, its solubility product, an appropriate showing of unexpected results would
have been a side-by-side experiment comparing two electrolytes, each containing the same
fluoride complex but in concentrations above and below its solubility product and under
essentially identical conditions. Here instead, each of appellants' three examples involve a
2"It should be noted that in each example relating to the
present invention, the electrolyte, Na SiF or KBF , is 2 6 4
present in an amount exceeding [appellants= emphasis] its
solubility product. E.g., Example 1, Na SiF has the
2 6
solubility product of 7.5 g/l but it is present in a
quantity of 8 g/l.
Whereas, in the comparison Example, based on the cited art, HBF is present in an
4
amount 3.5 g/l which is below [appellants= emphasis] its solubility of 300 g/l at the cited
temperature. Thus, once these F ions are consumed, there is no way, a replenishment is possible-
based on the teachings of the cited art. The presently pending claim 1 clearly has this limitation that
in the present case, fluorine complex must be present in concentration exceeding its solubility
product." (Brief, p. 10).
8
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