Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
Patent 5,401,305
1 analysis which we find sufficient involves precursors of silicon and tin oxide
2 and TEP. It is on the basis of the obviousness of the use of this particular
3 mixture that the Examiner is believed to have bottomed the rejection. Since
4 Appellants’ claims include a method for making a composition from a
5 silicon oxide precursor, a tin oxide precursor and TEP (without the use of
6 water), the claims are broad enough to read on subject matter which is
7 obvious and therefore are not patentable. In re Muchmore, 433 F.2d 824,
8 167 USPQ 681 (CCPA 1970).
9 Appellants also argue that they are using "unobvious" starting
10 materials and therefore the Ochiai rationale applies. We are at a loss to
11 understand Appellants' argument because all the ingredients used in
12 Appellants' process were known in the art long before Appellants made their
13 invention.
14 To complete our analysis, it seems to us that the Examiner has a point
15 when responding to Appellants' lack of predictability argument. If, as
16 Appellants seem to argue, there is no reasonable expectation of success,
17 where is the disclosure in Applicants' specification to support the breadth of
18 the claims before us? First, apart from claim 30, the claims do not require
19 the presence of a precursor of silicon oxide. The entire tenor of the
20 specification would seem to require the presence of a precursor. Second, if
21 the invention involves unpredictable subject matter, then how is the enabling
22 disclosure in the specification commensurate in scope with the breath of the
23 unpredictable subject matter being claimed? Appellants did not respond in
24 their reply to the Examiner's point and have not reconciled how the prior art
29
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