Appeal No. 2003-1850
Application 09/783,510
Trinh Table 3 and used the same in desired amounts in the automatic dishwashing detergent
compositions disclosed in the reference in the reasonable expectation of obtaining a composition
having the properties taught in the reference. See generally, Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989) (“That the ‘813 patent
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.”); In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 425 (CCPA 1971) (“As appellant
points out, Lauerer’s disclosure is huge, but it undeniably includes at least some of the
compounds recited in appellant’s generic claims and is of a class of chemicals to be used for the
same purpose as appellant’s additives.”); In re Lemin, 332 F.2d 839, 841, 141 USPQ 814, 815-16
(CCPA 1964)(“Generally speaking there is nothing unobvious in choosing ‘some’ among ‘many’
indiscriminately.”). Because the reference provides guidance with respect to the amount of base
masking perfume ingredients as “minimal,” and even though the perfume compositions
exemplify amounts ranging from 16% to 24 % for base masking perfume ingredients, we
determine that one of ordinary skill in this art working within the reference would have arrived at
a workable or optimum range for such amounts to suite his or her desires, and would not have
been limited in this respect by the amounts in the examples. In re Aller, 220 F.2d 454, 456,
105 USPQ 233, 235 (CCPA 1955) (“[W]here general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.”); see also 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.’”). Our
determination here includes appealed claims 1, 5 and 8.
With respect to the amount of water which can be present in the claimed compositions of
appealed claims 18 and 20, the examiner finds that the written description of automatic
dishwashing detergents in the specification includes “liquids” at page 1, line 13 (answer, page 4).
We find that the reference further teaches that adjunct materials, which are included in the
claimed compositions as well, “are selected based on the form of the composition, i.e., whether
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