Appeal No. 1999-0769 Page 10
Application No. 08/661,532
31 for y, we note that it is well established that
consideration of a reference is not limited to working
examples, but extends to the entire disclosure for what it
fairly would have taught to one of ordinary skill in the art.
In re Boe, 355 F.2d 961, 965,
148 USPQ 507, 510 (CCPA 1966). The sufficiency of motivation
or suggestion must be determined based on the overall
teachings of Xue.
In a case such as this where a working example product
description has been provided in the applied reference that
only slightly differs from the claimed product based on a
small variation in the amount of one of the components thereof
(the carbon component), we determine that the claimed product
including the range or value of that particular component
would have been arrived at by one of ordinary skill in the art
by simply following the teachings of Xue. Given that the
amount of the carbon content of the pyrolysis product taught
by Xue is very close to the amount claimed, prima facie one of
ordinary skill in the art would have expected the products to
have the same or similar properties. See Titanium Metals
Corp. v. Banner,
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