Appeal No. 2006-0545 Page 9
Application No. 10/019,273
1356, 60 USPQ2d 1396, 1401, 1402 (Fed. Cir. 2001); Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846(Fed. Cir. 1989) (“the 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.”) (quoting In re
Lamberti, 545 F.2d 747, 750, 192 UPSQ 278, 280 (CCPA 1976)). Leyshon’s
preference for a ZSM-5 catalyst does not detract from the teaching that a ZSM-12
catalyst is also suitable. This is especially true because the catalyst is used for the
identical purpose taught by the prior art. See In re Corkill, 771 F.2d 1496, 1500, 226
USPQ 1005, 1008 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of
prior art teaching that "hydrated zeolites will work" in detergent formulations, even
though "the inventors selected the zeolites of the claims from among 'thousands' of
compounds"); In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 425 (CCPA 1971)
(obviousness rejection affirmed where the disclosure of the prior art was "huge, but it
undeniably include[d] at least some of the compounds recited in appellant's generic
claims and it is of a class of chemicals to be used for the same purpose as appellant's
additives").
Appellants argue that Leyshon requires an additional methathesis reaction to
provide adequate propylene yields. (Brief, pp. 7-8). This argument is not persuasive of
patentability. Claim 1 is not limited to a single reactive step. Specifically, claim 1
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