Appeal No. 2003-1162 Page 22
Application No. 09/468,292
parameters (Answer, pp. 7-8). The level of guidance provided by the references is similar to the
level of guidance provided in the specification. In fact, Appellant’s specification refers to
Freemantle for guidance (specification, p. 9, l. 13 to p. 10, l. 7; see also Freemantle, particularly,
p. 33, col. 1, ll. 17-22). Given the strong dissolving ability of ionic liquids (even rocks dissolve:
Freemantle, p. 33, col. 2, ll. 29-31 and col. 3, ll. 1-3) and the ability to vary solubility extensively
(Freemantle, p. 33, col. 1, ll. 17-22), there would have been a reasonable expectation that ionic
liquids would work in the process of Frigo and that is enough to establish obviousness. In re
O’Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). Moreover, based on the
fact that the guidance in the specification is similar to that in the prior art, were we to find that
the prior art provides no reasonable expectation of success, we would be constrained to further
conclude that undue experimentation would be required to practice the full scope of Appellant’s
invention contrary to the enablement requirement of 35 U.S.C. § 112, ¶ 1. Here, there is either
obviousness or lack of enablement and Appellant points no clear flaw in the reasoning of the
Examiner with respect to obviousness.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claim 1 and those claims that stand or fall therewith which has not
been sufficiently rebutted by Appellant.
Issue (1b)
We next consider Issue (1b), i.e., the rejection of claims 59 and 60 under 35 U.S.C. §
103(a) as unpatentable over Frigo in view of Freemantle. Our focus will be on claim 59.
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