Appeal No. 2006-2369 Page 20
Application No. 10/169,618
ingredient types useful in diuretic compositions, the combination of ingredients in the
claims at issue being one of the disclosed combinations. Id. at 806-807, 10 USPQ2d at
1845-1846. Neither of the claimed ingredients was listed by the reference as being
preferred. Id. The court nonetheless held the claims to be obvious in view of the
reference’s explicit teaching that any one of the claimed compositions would produce a
diuretic composition having desirable properties. Id. at 807, 10 USPQ2d at 1845-1846.
In a situation analogous to that in Merck, claim 9 recites a compound having two
moieties disclosed in the prior art as being suitably combined to prepare coatings for
video photographic paper: (1) hydrolyzed starch (a polysaccharide moiety) and (2) a
linear alkyl isocyanate moiety. The cited references disclose a limited number of
possible polysaccharide moieties (cellulose, pullulan, starch, and hydrolysates thereof,
cellulose ester, cellulose ether, chitosan and chitin) which are useful in the preparation
of polysaccharide derivatives useful in video photographic paper coatings. See Sony
‘649, at [0007] and [0008]; Sony ‘775, at [0012]. As discussed supra, the cited
references also disclose nine specific potential isocyanate moieties useful in the
preparation of polysaccharide derivatives useful in video photographic paper coatings.
See Sony ‘649, at [0009]; Sony ‘775, at [0012]. Thus, the potential combinations
presented by the references cited in the examiner’s rejection are far fewer than the
number held by the court in Merck to be obvious. In our view the limited number of
potential combinations suggested by the references cited by the examiner is not
analogous to the unguided generic disclosures in Jones and Baird, but rather mirrors
the disclosure of specific equivalent embodiments in the manner of the reference
analyzed in Merck.
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