Appeal No. 2003-1162 Page 19
Application No. 09/468,292
to possible solutions to that problem. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 73
F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996).
Here, the Examiner has identified the portions of Frigo and Freemantle which provide a
suggestion to choose an ionic liquid for the liquid required by Frigo (Answer, pp. 7-8). Frigo
requires “a liquid of relatively low volatility” to be used as a solvent for a metal precursor (Frigo,
col. 3, ll. 59-61). Freemantle indicates that ionic liquids are very powerful solvents, have low
volatility, and have the other characteristics Frigo specifies as important (Answer, pp. 7-8). The
Examiner has specifically identified the principles present in the references which provide the
suggestion to combine. See In re Rouffet, 149 F.3d 1350, 47 USPQ2d 1453 (Fed. Cir. 1998)(The
principle, known to one of ordinary skill, that suggests the claimed combination must be
specifically identified).
Appellant attempts to call into question the Examiner’s finding of a suggestion by
engaging in an overly literal reading of Frigo. According to Appellant, the focus in Frigo is on
the volatility of the liquid relative to the precursor, not on the absolute vapor pressure of the
liquid (Amended Brief, pp. 5-6). According to Appellant, a skilled artisan reading Frigo would
not have been motivated to seek a liquid having a vapor pressure as low as possible, much less
having an extremely low or substantially no vapor pressure, such as the present recited ionic
liquids (Amended Brief, p. 6).
We, like the Examiner, disagree with Appellant’s interpretation of what Frigo would have
suggested to one of ordinary skill in the art. The Examiner provides a well reasoned response to
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