Appeal No. 2005-0440
Application No. 09/994,075
WO ’308 with the reasonable expectation of brightening the pulp,
thus arriving at a method encompassed by appealed claim 1. Both
the motivation to combine the references and the requisite
reasonable expectation of success are founded in the prior art,
not in the appellants’ own disclosure. In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991)(citing In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988)).
Hovey, the other principal prior art reference, teaches a
method for making pulp in which approximately 3 to 9% of calcium
carbonate filler is used to offset discoloration attributable to
alkalinity. (Page 2, column 1, lines 60-65.) Thus, as admitted
by the appellants (appeal brief at 6), Hovey “recognizes the
problem of alkaline darkening caused by the alkalinity of the
calcium carbonate.”
Tsukamoto teaches that a sulfonating compound such as a
sulfite, hydrogensulfite, or pyrosulfite improves mechanical
strength and brightness of the pulp. (Column 3, lines 25-36 and
48-52; column 4, lines 7-11.)
Thus, we also agree with the examiner that one of ordinary
skill in the art would have combined the teachings of Hovey and
Tsukamoto, thus arriving at a method encompassed by appealed
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