Appeal No. 2002-2249
Application 09/340,441
less, because in the Loh Example implantable substrates are coated with organosilane monomers
as a single reactant monomer for 10 minutes at a power of 80 watts (answer, pages 6-8). In this
respect, appellants point out that Ovshinsky and Loh are directed to different substrates, with
Ovshinsky disclosing non-implantable substrates, and different coating conditions (brief, pages
18-24). The examiner responds that one of ordinary skill in this art would have understood from
Loh that that increasing the power to 80 watts would permit forming a desired coating by the
process of Ovshinsky in less than 10 minutes (answer, page 12).
We, like appellants, find no objective teaching, suggestion or motivation in Ovshinsky,
alone or in combination with Loh, which would have led one of ordinary skill in this art to even
consider experimentation, routine or not, at the power level range specified in appealed claim 5
for any purpose. See In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972) (“Where,
as here, the prior art disclosure suggests the outer limits of the range of suitable values, and that
the optimum resides within that range, and where there are indications elsewhere that in fact the
optimum should be sought within that range, the determination of optimum values outside that
range may not be obvious.”). Indeed, on this record, it appears that the method of Loh, from
substrate to single reactant monomer, is indeed different from that of Ovshinsky such that
evidence or scientific explanation is required to establish that one of ordinary skill in this art
would have combined these teachings and on that basis, would have modified the power level in
the methods of Ovshinsky to that taught by Loh. See In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1783-84 (Fed. Cir. 1992) (“The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification.”); cf. Ex parte Levengood, 28 USPQ2d 1300,
1301-02 (Bd. Pat. App. & Int. 1993) (“At best, the examiner’s comments regarding obviousness
amount to an assertion that one of ordinary skill in the relevant art would have been able to arrive
at appellant’s invention because he had the necessary skills to carry out the requisite process
steps. This is an inappropriate standard for obviousness. . . . That which is within the capabilities
of one skilled in the art is not synonymous with obviousness. Ex parte Gerlach, 212 USPQ 471
(Bd. App. 1980).”).
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