Appeal No. 2003-1162 Page 21
Application No. 09/468,292
1123 (Fed. Cir. 1995)(An implied suggestion is enough); In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968)(“[I]n considering the disclosure of a reference, it is proper to take
into account not only the specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”).
One of ordinary skill in the art would have also expected a beneficial result. Frigo draws
a connection between volatility, vaporization, and undesirable contamination of the carrier gas.
Freemantle establishes that those of ordinary skill in the art recognized that ionic liquids have no
measurable volatility. Because vaporization levels would be minuscule, one of ordinary skill in
the art would have expected a reduction in undesirable contamination of the carrier gas when
employing ionic liquid in the process of Frigo. Expected beneficial results are evidence of
obviousness of a claimed invention, just as unexpected beneficial results are evidence of
unobviousness. In re Skoll, 523 F.2d 1392, 1397, 187 USPQ 481, 484 (CCPA 1975).
Appellant also argues that, even if there is a suggestion, it is merely a suggestion to try
various liquids with low or no vapor pressure (Amended Brief, p. 7). An invention is “obvious
to try” where the prior art provides either no indication of which parameters would be critical or
no direction as to which of many possible choices is likely to be successful. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845 (Fed. Cir.), cert. denied, 493
U.S. 975 (1989)(quoting In re O'Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir.
1988)). Here, as found by the Examiner, Frigo identifies the critical parameters for the “liquid of
relatively low volatility” and Freemantle describes liquids having characteristics meeting those
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