Appeal No. 2002-0429
Application No. 08/847,138
lines 6-13). We disagree with this argument as well. First, the
art suggests one of the selections to be made (copper
phthalocyanine). Second, that the cited art discloses a multitude
of effective combinations does not render any particular
formulation less obvious.
This is especially true because the claimed composition is
used for the identical purpose taught by the prior art. See In re
Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985)
(obviousness rejection of claims affirmed in light of prior art
teaching that "hydrated zeolites will work" in detergent
formulations, even though "the inventors selected the zeolites of
the claims from among 'thousands' of compounds"); In re Susi, 440
F.2d 442, 445, 169 USPQ 423, 425 (CCPA 1971) (obviousness
rejection affirmed where the disclosure of the prior art was
"huge, but it undeniably include[d] at least some of the compounds
recited in appellant's generic claims and it is of a class of
chemicals to be used for the same purpose as appellant's
additives"). Finally, there simply is no proof whatsoever that
there are “thousands“ of potential lab transport candidates.
The appellants also urge that the examiner has selected two
references and combined them with the benefit of the present
application, and one of ordinary skill in the art at the time the
1 Mori, column 42, example 63.
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