Ex parte TANI et al. - Page 4




                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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