Interference No. 103,995 Paper 29
Morel v. Sekhar Page 18
Lack of novelty is the epitome of obviousness. In re Fracalossi, 681 F.2d 792,
794, 215 USPQ 569, 571 (CCPA 1982). Thus, Morel claims 1, 3, 4, 6 and 9 are
unpatentable under 35 U.S.C. § 103 as being obvious over Sekhar ‘513 (SDEx 3).
According to Sekhar, the zirconium diboride to colloidal silica weight ratio of 1:1 to
9:1 recited in Morel claim 2 “is easily determined by routine experimentation, and it is not
inventive to discover the optimum or workable ranges by routine experimentation” (Paper
17, p. 23). Further according to Sekhar, sample 5 of Table V in Sekhar ‘513 (SDEx 3)
“comprises approximately 31.3% SiC, further comprises ZrB and colloidal silica” (Paper
2
17, p. 24) as required by Morel claim 5.
In its opposition, Morel argues that neither the titanium diboride nor zirconium
diboride combinations in Sekhar ‘513 disclose or suggest a weight ratio of diboride to
silica greater than about 1:6 (Paper 20, p. 3). Thus, Morel further argues, it is not required
to show the criticality of a range which is not disclosed by Sekhar ‘513 (Paper 20, p. 4).
Sekhar replies that the disclosure in Sekhar ‘513 “is not limited to any specific relative
ratio of zirconium diboride to colloidal silica” (Paper 25, p. 2).
While the examples in Sekhar ‘513 do not disclose a coating slurry having a weight
ratio of a diboride to colloidal silica of 1:1 to 9:1 (see e.g., SDEx, Table V, cc. 9-10), a
reference is not limited to the disclosure of its working examples. In re Mills, 470 F.2d 649,
651, 176 USPQ 196, 198 (CCPA 1972). Morel has not pointed us to where Sekhar ‘513
(SDEx 3) teaches away from use of such a weight ratio. Rather, Sekhar ‘513 suggests
that the coating slurry only requires two components, i.e., a colloidal carrier and at least
one powder additive (fact 37, p. 15 above). Moreover, a weight ratio of a diboride to
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