Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
Patent 5,401,305
1 v. Mylan Laboratories, Inc., 464 F.3d 1286, 80 USPQ2d 1001 (Fed. Cir.
2 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
3 Co., 464 F.3d 1356, 1360-61, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006).
4 What seems apparent on this record is that if one skilled in the art
5 knows that TEP can be used to make compositions containing silicon, then
6 one skilled in the art would have a reasonable expectation that TEP could be
7 used in similar compositions containing both silicon and tin. A reasonable
8 expectation of success is all that is required. In re O'Farrell, 853 F.2d 894,
9 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988); In re Longi, 759 F.2d 887, 897,
10 225 USPQ 645, 651-52 (Fed. Cir. 1985).
11 Appellants’ "no motivation" argument is seemingly bottomed on a
12 reasonable expectation that the combination would not be successful. Apart
13 from attorney argument, which of course is not evidence, the only
14 “evidence” in this record to support the attorney argument is Appellants’
15 admission at col. 3, line 65 through col. 4, line 2 of Appellants' patent.
16 However, that admission on its face is narrowly drawn to rates suitable for
17 "mass production" from "readily available and relatively inexpensive
18 reagents." The claims before us are not limited to any particular use (rates
19 suitable for mass production) or to particular reagents (inexpensive
20 reagents). Moreover, we are not aware of any requirement of law that
21 obviousness be evaluated on the sole basis of whether an invention can be
22 used in commercial practice. The useful arts can be promoted by inventions
23 which never become commercial.
24 Appellants also claim there is a lack of "motivation" because Gordon
25 '316 says in Example 2 that water is to be avoided, at least when aluminum-
26 2,4,-pentanedionate is used as a metal oxide precursor. The obviousness
28
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