Appeal No. 2005-1332 Page 5
Application No. 09/774,064
directed to picking and choosing an inorganic pigment from a much larger genus than
acknowledged by the Examiner. Moreover, there is no direct disclosure of a pigment mixture
containing an amount of calcium carbonate within the claimed range coupled with an amount of
emulsion particles in the claimed range of 1-25%. To obtain the composition of claim 1, one of
ordinary skill in the art must both pick and choose among the various acceptable inorganic
pigments and conduct some experimentation, albeit routine in nature, with regard to the amount
of inorganic pigment and emulsion particles to include in the pigment. Therefore, we find the
disclosure of Hoshino lacks the specificity required for a finding of anticipation.
Obviousness
The question of obviousness, however, stands on a different footing. As stated above,
picking and choosing within the teachings of the prior art is entirely proper in the context of an
obviousness rejection. Arkley, 455 F.2d at 587-88, 172 USPQ at 526. Routine experimentation
involving such parameters as concentration is also proper in the context of obviousness. See In
re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Note also In re Woodruff, 919
F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955).
Claim 1 requires that calcium carbonate be present in the pigment in an amount of 50-100
weight %. The claim further requires that the aqueous dispersion of emulsion polymers be
present in an amount of 1-25%, as dry weight by weight of the pigment. The Examiner finds
that Hoshino describes, as a preferred embodiment, including the emulsion polymer particles in
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