Appeal 2006-2175
Application 10/122,855
Offshack’s explicit recitation that the detergent compositions in Table 1 are
in “granular” form, adding water to form a gel or liquid detergent would
render Offshack’s detergent composition unsatisfactory for its intended
purpose (i.e., use as a granular detergent). Therefore, the Examiner’s
proposed modification lacks the required suggestion or motivation. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)
(explaining that if a proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
is no suggestion or motivation to make the proposed modification).
Accordingly, we find no motivation for adding water to Formulation B in
Table 1 in such an amount to form a gel or liquid detergent composition.
Additionally, the Examiner’s interpretation of polyhydroxy compound
in the claims to include “PEG 8000” in the catalyst particle of Formulation B
in Table 1 is not correct. Appellants provide a Markush group of various
polyhydroxy compounds in the claims. PEG 8000 is not a member of the
Markush group. The Examiner attempts to fill this apparent gap by pointing
to Offshack’s disclosure of ethylene glycol and propylene glycol,
presumably reasoning that either one of these compounds would be
substituted for the PEG 8000.
However, as Appellants have correctly argued, Offshack’s disclosure
of ethylene glycol or propylene glycol is provided within the context of
forming “[s]uitable block polyoxyethylene-polyoxypropylene polymeric
compounds” (See Offshack, col. 19, ll. 27-29). We fail to see how such
disclosure of using ethylene glycol or propylene glycol to make polymeric
compounds would have motivated one of ordinary skill in the art to
substitute said compounds for PEG 8000 in Formulation B of Table 1. In
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