Appeal No. 2000-0994
Application 09/097,123
because one of ordinary skill in the art would not be motivated to remove zinc oxide taught by
Wright to be necessary to the composition, and it would require undue experimentation to arrive
at the claimed viscosity range for the phenyl-methyl siloxane (id., pages 8-9). We cannot agree.
The issue here is whether each of Lontz and Wright would have reasonably suggested the
claimed composition to one of ordinary skill in this art. See generally, Merck v. Biocraft, supra;
Lemin, supra. Thus, the selection of ingredients made by this person must be considered based
on the teachings of the reference, and not whether the selection would be made based on
appellants’ invention. See generally, See In re Kronig, 539 F.2d 1300, 1304, 190 USPQ 425,
428, (CCPA 1976) (“[I]t is sufficient here that [the reference] clearly suggests doing what
appellants have done.”). In this respect, the selection of ingredients that can be made by one of
ordinary skill in this art within the teachings of the reference is not limited to exemplified
ingredients. See generally, Merck v. Biocraft, 874 F.2d at 807, 10 USPQ2d at 1846, quoting In
re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“But in a section 103
inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since
all disclosures of the prior art, including unpreferred embodiments, must be considered.’”). The
fact that the reference discloses a range for a parameter that is different from the range claimed
for the same parameter does not patentably distinguish the claimed invention where the claimed
range overlaps with or is encompassed by the range disclosed in the reference in the absence of a
showing of the criticality of the claimed range. See generally, Geisler, supra; Boesch, supra; see
also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (“The law is
replete with cases in which the difference between the claimed invention and the prior art is some
range or other variable within the claims. [Citations omitted.] These cases have consistently held
that in such a situation, the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the prior art range.
[Citations omitted.]”).
There is no dispute that Lontz and Wright each disclose the phenyl-methyl siloxane and
polytetrafluoroethylene ingredients of the claimed composition, even if these components are not
disclosed therein to be preferred. We point out here that compositions encompassing zinc oxide
are encompassed by appealed claim 1 as we discussed above. Therefore, we cannot agree that
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