Appeal No. 2005-0359
Application No. 09/333,917
amounts of C2-C4 (meth)acrylates, C5 or higher (meth)acrylates,
and polyfunctional (meth)acrylates are limited to 20% by wt.,
15% by wt., and 10% by wt., respectively. (Id.) This position
lacks merit. Our reviewing court has explained that the “case
law does not require that a particular combination must be the
preferred, or the most desirable, combination described in the
prior art in order to provide the motivation for the current
invention.” In re Fulton, 391 F.3d 1995, 1200, 73 USPQ2d 1141,
1145 (Fed. Cir. 2004). Rather, the court has instructed:
“[T]he question is whether there is something in the
prior art as a whole to suggest the desirability, and
thus the obviousness, of making the combination,” not
whether there is something in the prior art as a whole
to suggest that the combination is the most desirable
combination available.
Id. (quoting In re Beattie, 974 F.2d 1309, 1311, 21 USPQ2d 1040,
1042 (Fed. Cir. 1992); accord In re Gurley, 27 F.3d 551, 552-53,
31 USPQ2d 1130, 1132 (Fed. Cir. 1994)(“A known or obvious
composition does not become patentable simply because it has
been described as somewhat inferior.”).
Relying on the data presented in Table 1 of the present
specification (page 26), the appellants urge that compositions
“containing less than the requisite total amount of paraffin and
1,4-butanediol dimethacrylate (1,4-BDMA) results in poor curing,
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