Appeal 2006-2444
Application 10/342,053
Appellants argue that nothing in the prior art suggests exceeding the
solubility limit of the co-solvent in the supercritical carbon dioxide (Reply
Br. 2).
Appellants’ arguments are not persuasive. Contrary to Appellants’
argument that exceeding the solubility limit is “counterintuitive,” we agree
with the Examiner that one of ordinary skill in the art would have selected
the co-solvent based on its function (i.e., its ability to clean and act as a
carrier) and optimized the amount necessary to achieve the best results
(Answer 5-6). Additionally, since the amount of co-solvent necessary for
exceeding the solubility to form a two-phase mixture can be a miniscule
amount more than the concentration to achieve full solubility, this very small
difference in amount would have been expected to produce the same results
and thus would have been prima facie obvious, absent a showing of
unexpected results. See Titanium Metals Corp. v. Banner, 778 F.2d 775,
783, 227 USPQ 773, 779 (Fed. Cir. 1985). See also In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (“The law is
replete with cases in which the difference between the claimed invention and
the prior art is some range or other variable within the claims. [Citations
omitted]. These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical…”).
With regard to claim 8 on appeal, the Examiner finds that Schilling
teaches a method of exposing the substrate to the cleaning mixture, rinsing
the substrate, and re-exposing the substrate to the cleaning mixture
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