Appeal 2007-2417
Application 10/688,521
relied upon to show the level of skill in the art. In re GPAC, 57 F.3d 1573,
1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995).
There need not be explicit suggestion in the prior art to combine the
teachings of prior art references. As stated by the Supreme Court, “[t]he
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.”
KSR, 127 S. Ct. 1741, 82 USPQ2d 1396. Therefore, “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 127 S.Ct. at 1739, 82
USPQ2d at 1395.
“In determining whether the subject matter of a …claim is obvious,
neither the particular motivation nor the avowed purpose of the [Applicant]
controls.” KSR, 127 S.Ct. 1742, 82 USPQ2d 1397. Thus, obviousness does
not require a suggestion in or expectation from the prior art that the claimed
invention will have the properties discovered by Applicant. In re Dillon,
929 F.2d 688, 693, 16 USPQ2d 1897, 1901-02 (Fed. Cir. 1990).
We have considered only those arguments made before us in coming
to our decision. Arguments not made are waived. See 37 C.F.R. § 41.37(c)
(1) (vii) (2004).
V. Analysis
Claims 1, 3, and 6-12 are rejected over the combination of Hallock
and Verhaverbeke.
The Examiner found that Hallock teaches each feature of the claimed
invention except that Hallock does not teach that a supercritical fluid is
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