Appeal No. 1998-1411 Page 7
Application No. 08/562,316
motivation to combine the teachings of Dammel with those of Hill and Hofmann wherein the result
would have been the claimed composition.
The subject matter of a claim is unpatentable as obvious “if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C.
§ 103(a) (1994). Appellants indicate that what they have discovered is that “the combination of the
disclosed binder with relatively high concentrations of photoinitiator and specific low vapor pressure
solvents produce a liquid negative photoresist which is resistant to blocking and performs exceptionally
as compared to prior art resists.” (Amended Brief, page 7). While we are mindful that those of
ordinary skill in the art would have understood generally which solvents would be useful in the
compositions of Hill and Hofmann, Dammel is directed to a different resin system and it would not
appear that one of ordinary skill in the art would have had a reasonable expectation that the solvents
disclosed in Dammel would have necessarily worked in the resin system of Hill and Hofmann without
the performance of further investigation and experimentation. See The Gillette Co. v. S.C. Johnson
& Son Inc., 919 F.2d at 725, 16 USPQ2d at 1928 quoting In re Eli Lilly & Co., 902 F.2d 943, 945,
14 USPQ2d 1741, 1743 (Fed. Cir. 1990) (The general disclosure must do more than lead one of
ordinary skill in the art down the path of investigation, it must contain a sufficient teaching of how to
obtain the desired result or must indicate that the claimed result would be obtained if certain directions
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007