1 (5)
2 Claim 19 (but not claims 1 and 17) calls for the use of a particular
3 ratio of silicone oil to CAB-O-SILŪ fumed silica. We have held that it
4 would have been obvious to use a mixture of silicone oil and CAB-O-SILŪ
5 fumed silica. Manifestly, a person having ordinary skill in the art using a
6 mixture knows that some ratio of one to the other has to be used.
7 There is nothing in the specification to indicate that the ratio is in any
8 way critical or that any unexpected result is obtained using the claimed ratio.
9 Nor can we imagine that one skilled in the art using a mixture of silicone oil
10 and CAB-O-SILŪ fumed silica would be unable to determine an appropriate
11 ratio of one to the other. In fact, as shown by Habib, one skilled in the art
12 would know that some experimentation is appropriate to determine suitable
13 amounts of fumed silica to use to obtain a given amount of reduced tack.
14 See Habib, col. 7-8, Table A and B. On this record, the ratio limitation does
15 not render the claimed subject matter, as a whole, non-obvious.
16
17 (6)
18 The examiner's obviousness rationale is different from the rationale
19 discussed to this point in this opinion. Nevertheless, it too supports a
20 holding of obviousness albeit on a different obviousness theory.
21 From the examiner's point of view, it would have been obvious to use
22 the attractant coating of Prochnow on the fishing lure of Hastings. It is true
23 that Hastings makes lures from a composition designed to attract fish. On
24 this record, we do not know how well the Hastings attraction compositions
25 worked. What we do know, however, is that Prochnow's subsequent
26 development in the fish attracting field is a coating which preferably
27 contains, inter alia, CAB-O-SILŪ fumed silica. Those skilled in the art
21
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Last modified: September 9, 2013