Appeal No. 2006-1161
Application No. 10/322,254
1901 (Fed. Cir. 1990) (in banc). [In re Geisler, 116 F.3d 1465, 1470,
43 USPQ2d 1362, 1365 (Fed. Cir. 1997).]
In this case, there is no evidence of unexpected results. Optimizing the yield of
monoaddition product would be achieved, just as expected, when following the
suggestion/teaching in Kimoto. Further this is not an “obvious to try” situation, given
the prior art expressly teaches what parameters to vary and how to vary them to obtain
the desired product. See In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988), quoted in Merck & Co. v. Biocraft Labs, 874 F.2d 804, 807, 10 USPQ2d
1843, 1845 (Fed. Cir. 1989).
Appellants argue “the reference teaches away from the present invention by
demonstrating Examples which are qualitatively opposite the present invention.” Brief at
9 (emphasis in original). We disagree. “[A]ll of the disclosures in a reference . . . ‘must
be evaluated for what they fairly teach one of ordinary skill in the art.’” In re Inland
Steel Co., 265 F.3d 1354, 1361, 60 USPQ2d 1396, 1401 (Fed. Cir. 2001) (quoting In re
Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966)). See also In re Mills, 470
F.2d 649, 651-52, 176 USPQ 196, 198 (CCPA 1972). Thus, the working examples must
be considered in light of Kimoto’s teachings as a whole, and the teachings as a whole do
not teach away from the present invention. See col. 11, line 50-col. 12, line 17 (quoted
supra at 4-5).
In any case, in Example 2 Kimoto obtains the sought-after monoaddition product
when a slight excess of HFPO is used. See col. 29, lines 43-58. The fact that the yield is
somewhat less than optimal does not mean the example teaches away from the claimed
invention. Kimoto teaches the skilled artisan how to obtain a greater yield of
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