Appeal 2007-0691
Application 10/465,423
1 (a) and (c). Also we find it difficult to overlook the fact that while Chasan
2 describes a "genus" of triazoles, Chasan identifies only two triazoles as
3 being preferred. Col. 4:60-65. We entertain no doubt that a person skilled
4 in the art, given the disclosure in Chasan, would have (1) known how to test
5 at least each of the two triazoles for metal-reducing characteristics, and
6 (2) would have expected one to be better than the other. That Ciba's favored
7 and claimed IRGAMET 30 triazole turned out to be that triazole is not
8 surprising.
9 Ciba has not met its burden, with clear and convincing evidence, of
10 establishing unexpected results commensurate in scope with the breadth of
11 the claims.
12
13 Ciba's principal argument
14 Ciba's principal argument seems to be that none of the prior art
15 references "mention lead passivation, but rather only iron and copper
16 passivation." Appeal Brief 4. As pointed out previously, the claims on
17 appeal do not require any particular level of lead passivation. More to the
18 point is that one skilled in the art learns from Chasan that various
19 ingredients, including base fluids, triazoles and other ingredients can be used
20 to make a lubricant for a two-stroke engine. One skilled in the art uses
21 known elements to perform known functions even if those functions are to
22 obtain metal-reducing characteristics other than lead-reducing
23 characteristics. Anderson's-Black Rock, Inc. v. Pavement Salvage Co., Inc.,
24 396 U.S. 57, 59 (1969). That Ciba's focus was on one problem and the prior
25 art was addressing another problem is not dispositive, particularly where the
26 claims do not limit the alleged invention to the unexpected result said to be
15
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013