Appeal No. 2007-0180 Page 4
Application No. 10/663,843
The Examiner asserts that Pallaske and Mukai “provide additional
motivation” to have utilized the pyrethroids “cypermethrin or permethrin by
disclosing their known use in wood protection against wood damaging insects. One
having ordinary skill in the art would therefore have been amply motivated to
further protect Schmitt’s sawn timber against insect damage by including a
pyrethroid insecticide such as cypermethrin or permethrin.” Answer 5 and
6: 13 to 7: 4. Summarizing Schmitt’s disclosure, the Examiner concludes that it
“clearly disclose[s] such a formulation type [as claimed] in that the corresponding
ingredients are all disclosed in claim-recited concentration amounts wherein
concentrated emulsions are disclosed (column 2, lines 41-44).” Id.
Appellants assert that the error in the rejection of the claims is that the
Examiner failed to establish a prima facie case of obviousness. Br. 9, “The Error
in the Rejection.” They argue that “Schmitt describes that many additive
compounds including pyrethroids, may be added to the composition; however, it
does not exemplify a formulation comprising additive compounds, let alone a
pesticidal emulsifiable concentrate comprising pyrethroids.” Br. 11.
There is no requirement under 35 U.S.C. § 103 that a prior art reference
“exemplify” the claimed subject matter. Obviousness under 35 U.S.C. § 103 asks
“‘not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was made.’”
In re Lamberti, 545 F.2d at 750, 192 USPQ at 280.” Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807-8, 10 USP2d 1843, 1846 (Fed. Cir. 1989). “All the
disclosures in a reference must be evaluated . . . a reference is not limited to the
disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651, 176
USPQ 196, 198 (CCPA 1972).
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