Appeal 2007- 2552
Application 10/276,428
those mixtures that are optimal for the desired intended use would have been
well within the capabilities of one of ordinary skill in the art. See In re
Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (“This
court and its predecessors have long held, however, that even though
applicant's modification results in great improvement and utility over the
prior art, it may still not be patentable if the modification was within the
capabilities of one skilled in the art, unless the claimed ranges 'produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art.'" quoting In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955) and citing In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990)).
With respect to claim 4, Appellants contend that Amalric does not
disclose or suggest that the branched alkyl glycoside is derived from an
alcohol consisting of at least 50% of a Guerbet alcohol (Br. 8). In response
to the Examiner’s finding that claim 4 does not require a Guerbet type
alcohol, but encompasses branched alkyl gylcosides derived from a genus of
primary alcohols as well as the Formula II alcohols recited in the claim,
Appellants contend that Amalric does not mention anything about what
structure a possible branched alcohol should have (Reply Br. 3). We agree
with the Examiner that claim 4 is not limited to Guerbet type alcohols, the
branched alkylglycoside may be derived from any one of the three recited
types of alcohols listed in the claim as they are recited as alternatives.
Amalric generally describes the use of branched alkyl glycosides and further
describes deriving the alkyl glycosides from alcohols (FF 8). The particular
branched alcohols appropriate for use to form the alkyl glycoside would
have been identified by routine experimentation. Moreover, given the
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