Appeal No. 2001-2491 Page 8
Application No. 09/168,564
Appellants say that one of ordinary skill in the art would ascertain a trend in the
comparative data to extend its probative value to the limits of the present claims (Reply Brief at
3). Appellants, however, present no adequate basis for reasonably concluding that the various
combinations of metals and reaction conditions encompassed by the claims would behave in the
same manner as the tested nickel and molybdenum at the reaction conditions of the tests. It is not
seem how the testing of nickel-molybdenum evinces a trend with respect to the other thirty-two
untested metal combinations and the may other possible reaction conditions.
We conclude that the totality of the evidence supports the Examiner’s conclusion of
obviousness with respect to the subject matter of the claims.
Obviousness
Appellants basically reiterate the arguments made to address the obviousness-type double
patenting rejection (Brief at 10). These arguments fail for the reasons stated above.
In addition, Appellants argue with regard to claim 3 that Perego’s Group VIII metal is, in
essence, either the noble metals of palladium or platinum while claim 3 is limited to non-noble
metals (Brief at 11). This argument is not persuasive because Perego merely discloses palladium
and platinum as preferred (Perego at col. 2, l. 66 to col. 3, l. 4). A reference may be relied upon
for all that it would have reasonably suggested to one having ordinary skill in the art, including
non-preferred embodiments. Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807, 10
USPQ2d 1843, 1847 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Perego generally
suggests using Group VIII metals. Wittenbrink also indicates that Group VIII metals, such as
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