Appeal No. 2006-1756
Application 10/087,742
617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); In re Aller, 220 F.2d 454, 456, 105 USPQ
233, 235 (CCPA 1955); see also Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807,
10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989) (“That the ‘813 patent discloses a multitude of
effective combinations does not render any particular formulation less obvious. This is especially
true because the claimed composition is used for the identical purpose.”); In re Susi, 440 F.2d
442, 445, 169 USPQ 423, 425 (CCPA 1971) (“As appellant points out, Lauerer’s disclosure is
huge, but it undeniably includes at least some of the compounds recited in appellant’s generic
claims and is of a class of chemicals to be used for the same purpose as appellant’s additives.”);
In re Lemin, 332 F.2d 839, 841, 141 USPQ 814, 815-16 (CCPA 1964)(“Generally speaking there
is nothing unobvious in choosing ‘some’ among ‘many’ indiscriminately.”).
We are not convinced otherwise by the authority on which appellants rely as neither
Baird nor Jones supports appellants’ position. Indeed, in each case, the reference provided no
teachings which would have directed one of ordinary skill in the art to select particular moieties
necessary to arrive at the therein claimed compounds. Baird, 16 F.3d at 382, 29 USPQ2d at
1553-55; Jones, 958 F.2d at 349-51, 21 USPQ2d 1941, 1943-44. In the present appeal, Carey
would have provided direction to specific elements in specific amounts to arrive at lead-free Sn
solders which are the same as or similar to the claimed solders.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Rikiya and in Carey with appellants’
countervailing evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1 through 6 would have been obvious as a matter of
law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv) (2005).
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