Appeal 2007-1679
Application 11/041,470
the invention and the compositions of the comparative Examples, as well as
the differences in the heat treatments used. In the words of the Examiner,
"due to the presence of diverse amounts and types of components in
Example 1 vs. the comparative examples as well as the different treatments
of the lenses, any difference in results cannot be singly attributable to the
claimed proportion of dimethyl- diethylsaline" (Answer, 12, second para.).
In re Dunn, 349 F.2d at 439, 146 USPQ at 483-84.
We also find no merit in Appellants' argument that the "consistently
essentially of" language of claim 18 renders the subject matter unobvious
over the cited prior art. The Examiner properly explains that Fujioka
requires only the claimed components in the hardenable composition.
Appellants' argued exclusion of Fujioka's optional ingredients does not make
the claimed composition nonobvious. Clearly, Fujioka does not require the
presence of optional components in the disclosed composition. Moreover,
Appellants have not demonstrated that the inclusion of Fujioka's optional
components in the claimed composition would materially affect the basic
nature of the claimed composition as a hardenable, abrasion resistant
coating. In re De Lajarte, 337 F.2d 870, 873-74, 143 USPQ 256, 258
(CCPA 1964).
Similarly, the "consisting of" language of claims 45 and 47 does
nothing to make compositions within the scope of the claims nonobvious
over the cited prior art. Manifestly, one of ordinary skill in the art would
have found it obvious to exclude the optional components of Fujioka to
formulate compositions within the scope of claims 45 and 47.
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