Appeal No. 2005-0209
Application 09/274,014
We do not find in appellants’ arguments and testimony any basis for a conclusion that
one of ordinary skill in this art would have been led away from the claimed invention by the
teachings of Girot. The fact that on this record, 0.2 cm3/gram of porous silica, the lower end of
the range for porous silica disclosed in Girot, has a pore volume range of “about 30%” casts a
different light on appellants’ arguments. We find that the testimony in ¶ 15 of the Boschetti
declaration must be considered in the context of the teachings and inferences that one of ordinary
skill in this art reasonably would have found in Girot, which teachings include the preferred as
well as the unpreferred embodiments, see generally, In re Lamberti, 545 F.2d 747, 750,
192 USPQ 278, 280 (CCPA 1976) (“[T]he fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.”), unless the reference criticizes, discredits or otherwise
discourages the selection of an embodiment, thereby teaching away from that embodiment. See
In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1145-46 (Fed. Cir. 2004).
Indeed, as the examiner points out, there is no disclosure in Girot or limitation in the
claims thereof as a whole which would have taught one of ordinary skill in this art to solely
make the pore volume “as large as possible, to maximize the binding capacity of the final
material” in sharp contrast to the presently claimed invention as Dr. Boschetti testifies. In this
respect, we have found that Girot would have taught that the interactive polymer network is
found on the exterior or external surfaces as well as the interior or internal surfaces of the porous
mineral oxide solid matrix and thus, the interaction with the macromolecules is not limited to the
pores in the disclosure of Girot (see above pp. 4-5), just as the interaction with macromolecules
is not limited to the external surface of the support in appealed claims 1, 2, 7 and 11 (see above
p. 4). Furthermore, we find no evidence in the record supporting appellants’ allegations in the
reply brief that their “empirical studies” establish that the lower end of the porous volume range
of the mineral oxide supports of Girot, that is, 0.2 cm3/gram, corresponds to a “porosity of about
40%,” apparently regardless of the porous mineral oxide support, such evidence being necessary
in view of the examiner’s “correct” calculations based on porous silica. Thus, this argument is
entitled to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979).
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