Appeal No. 1996-3535
Application No. 08/236,006
appropriate evidence or reasoning that the appellants limit
their claims to the specific materials and concentrations
which have been exemplified in specification Table 1 as
effecting the desired Zeta potential shift of the here claimed
invention. However, to demand that the first to disclose
shall limit his claims to what he has found will work or to
materials which meet the guidelines specified for “preferred”
materials in a process would not serve the constitutional
purpose of promoting progress in the useful arts. In re
Goffe, 542 F.2d 564, 567, 191 USPQ 429, 431 (CCPA 1976).
In light of the foregoing, the examiner’s section 112,
first paragraph, rejection cannot be sustained.
The examiner’s section 103 rejection likewise cannot be
sustained. The applied references contain no teaching,
suggestion or motivation to combine the applied references in
the manner proposed by the examiner based upon a reasonable
expectation of success. In re O’Farrell, 853 F.2d 894, 903-
04,
7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988). In this regard, it
is significant that Metzger relates to a process for
electroless metallizing whereas Kurosaki relates to a process
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