Appeal No. 1998-0773 Page 4
Application No. 08/578,106
In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000) (citations
omitted).
In the present case, using the Appellants’ description of their invention as a guideline, it is
possible to pick out the various chemical constituents of the claimed composition from the prior art.
However, we cannot agree that the prior art alone would have provided sufficient guidance to have
made it obvious to one of ordinary skill in the art at the time of invention to select those particular
constituents and make the combination made by Appellants. In particular, we are doubtful that one of
ordinary skill in the art would have looked to the teachings of Wu in order to select a resistance material
for use in the composition of Hankey with a reasonable expectation that the chosen material would have
the properties desired by Hankey.
Hankey describes an electrical resistance composition containing a conductive metal oxide
component (col. 2, line 67 to col. 3, line 5), a binder made of fritted glass (Example 1), and an organic
vehicle (col. 5, lines 12-13). The Examiner and Appellants agree that the conductive metal oxide of
Hankey is not the same as that recited in the claims (Answer, page 4; Brief,
page 5). For instance, the level of Sr is required to be at least 0.8 moles while the level of Ca is
required to be less than 0.2 moles whereas the claim requires the levels of Sr and Ca to be between
0.25 and 0.75 moles.
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