Appeal 2007-2234
Application 09/950,477
disclosure in a reference must be evaluated, including non-preferred
embodiments, and a reference is not limited to the disclosure of specific
working examples). Thus, one of ordinary skill in the art reading Miranda,
particularly in light of the incorporated Iler disclosure, would have been
made aware of an aqueous substantially latex-free antiskid composition
comprising aluminate-modified silica sol and an alcohol (i.e., an organic
additive) as required by claim 21. That person would have treated paper
materials therewith to provide improved anti-skid properties (as required by
claim 1) because aluminate-modified silica particles were expected to
provide increased stability and a broader range of applications, because the
alcohol is expected to provide improved stability and enhanced cleanability
of the machinery used to apply the composition, and because a trace of latex
would be expected to reducing sliding (latex) while facilitating the
application of the composition to the machinery (diluted solution).
Therefore, we conclude that the disclosure of Miranda, taken in light of the
incorporated disclosure of Iler, would have made the claimed invention at
least prima facie obvious to a person having ordinary skill in the art. Cf. In
re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)
(although the motivation to combine differs from that of the applicant, the
motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness).
We are not persuaded otherwise by the Larsson Declaration. Neither
Example compares solutions having the same concentration and types of
constituents, but for untreated silica particles versus aluminate modified
silica particles. Mr. Larsson has failed to explain the basis for his opinion
(Larsson Declaration, 3, ¶ 3). For example, Mr. Larsson has failed to
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