Appeal 2007-2213
Application 10/355,433
(Br. 13). We are not persuaded by this argument. As the Examiner pointed
out, “Okamoto is not relied on for the teaching of an iterative process.
Brennan teaches an iterative process and is relied upon for that teaching”
(Answer 8).
Appellants also state that “Okamoto discloses that ‘when viscosity is
1-5 cps and surface tension is 30 dyn/cm, the position of arrival on a solid
support becomes significantly accurate and is especially suitable . . .’”
(Br. 14). Appellants argue:
if an ordinary practitioner were to read the above cited passage
and were to be motivated to include an ethylene glycol
viscosity enhancer (as disclosed in Okamoto) into the array
fabrication methods disclosed in Brennan, the ordinary
practitioner would formulate the ejection liquid in such a
manner that it would have a viscosity in the range of 1 to 5 cps,
because as Okamoto discloses: a viscosity of 1-5 cps is
especially suitable.
(Id.) Based on Okamoto’s disclosure that a viscosity of 1-5 cps is especially
suitable, Appellants also argue that “[t]here is no likelihood of success in the
Appellants’ claimed invention” (id.).
We are not persuaded by this argument. As noted by Appellants,
Okamoto states that a viscosity of 1-5 cps “is especially suitable” (Okamoto,
col. 4, ll. 46-48). However, Okamoto also states that a viscosity of 1-15 cps
is preferred (id. at col. 4, ll. 44-45). Thus, we agree with the Examiner that
one of ordinary skill in the art would have been motivated to select a
viscosity of 1-15 cps, including a viscosity between 7 and 15 cps. See In re
Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (“A
known or obvious composition does not become patentable simply because
it has been described as somewhat inferior to some other product for the
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