Appeal No.2003-0078 Page 7
Application No.09/257,066
alleged increase in stability of the composition (reply brief),
to establish a prima facie case of obviousness. See In re Kemps,
97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996) (the
motivation to combine features need not be identical to that of
appellant to establish a prima facie case of obviousness).
Furthermore, to the extent appellants may have recognized another
potential advantage of the claimed composition that would have
arisen by otherwise following the teachings of the prior art,
that recognition does not necessarily form a basis for
patentability. See In re Woodruff, 919 F.2d 1575, 1577-1578, 16
USPQ2d 1934, 1936 (Fed. Cir. 1990).
As for separately argued claim 11, we agree with the
examiner that Falk ‘967 teaches that a mixture of compounds may
be employed for the fluorinated surfactant, which would include a
mixture of amphoteric compounds. See, e.g., column 4, lines 7
and 8 of Falk ‘967. As reasonably determined by the examiner,
one of ordinary skill in the art in employing more than one of
the fluorinated amphoteric surfactants, such as listed in Table
1b of Falk ‘967, would have reasonably expected that the selected
amphoteric surfactants would have differing physical properties,
including different temperature resistances. While counsel
asserts that such a temperature resistance difference may not be
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