Appeal No. 2003-1162 Page 18
Application No. 09/468,292
There is no question here that, as found by the Examiner, Frigo describes the process of
claim 1 except that Frigo does not specify the use of an ionic liquid as the solvent for dissolving
the precursor (Frigo, col. 3, ll. 46-51 and ll. 59-61; Answer, p. 7; Amended Brief, pp. 5-7). Nor
is there any question that, as further found by the Examiner, Freemantle describes the use of ionic
liquids as solvents (Answer, p. 7; Amended Brief, pp. 5-7). Rather, Appellant argues that there is
no motivation to combine the teachings of the two references (Amended Brief, pp. 5-7; Reply
Brief, pp. 1-2). In the alternative, Appellant argues that, even assuming there is a suggestion
supporting the combination, it simply amounts to a suggestion to try various liquids with low or
no vapor pressure: There is nothing in the references that would have prompted one to
specifically select ionic liquids (Amended Brief, pp. 6-7; Reply Brief, p. 2).
A claim is unpatentable as obvious “if the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill in the art.” 35
U.S.C. § 103(a) (2001). In making a determination of obviousness, one must look at what the
combined teachings of the references would have suggested to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). A suggestion supporting
obviousness may come: (1) expressly from the references themselves; (2) it may come from
knowledge held by those of ordinary skill in the art that certain references, or disclosures in the
references, are known to be of special interest or importance in the particular field; or (3) it may
come from the nature of a problem to be solved, leading inventors to look to references relating
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