Appeal No. 2003-1162 Page 24
Application No. 09/468,292
meaning which, as evidenced by Appellant’s Exhibit A, is “considerable ... in amount.” See Id.;
In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994).
Frigo does not teach away from substantially dissolving the precursor as argued by
Appellant (Amended Brief, pp. 7-8). While Frigo requires that the precursor remain in part as a
solid, Frigo does not specifically exclude dissolving considerable amounts of the precursor nor
does Frigo indicate that the process will not work at such levels. Frigo only indicates that good
results are obtained when no more than 50% by weight of the precursor initially dissolve. This is
merely a preferred embodiment. It is well settled that a prior art reference is relevant for all that
it teaches to those of ordinary skill in the art. In re Fritch, 972 F.2d 1260, 23 USPQ2d 1780,
1782 (Fed. Cir. 1992). See also Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807, 10
USPQ2d 1843, 1847 (Fed. Cir. 1989) (A reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art, including non-preferred
embodiments). Nor does the claim exclude initial levels of less than but approaching 50% by
weight dissolved as such levels are “considerable in amount” within the meaning of the claim.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 59 and 60 which has not been sufficiently rebutted by
Appellant.
Issue (2)
We next consider Issue (2), i.e., the rejection of claims 2, 20-22, 33, and 38 under 35
U.S.C. § 103(a) over Frigo and Freemantle and further in view of AAPA. For this rejection, the
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