Appeal 2007-3191
Application 10/482,217
guidance as to which of the species within the disclosed genus will provide
the desired properties; the species cannot merely be “obvious to try.” See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843,
1845 (Fed. Cir. 1989) (citing In re O'Farrell, 853 F.2d 894, 903, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988)(“An invention is ‘obvious to try’ ‘where the
prior art [gives] either no indication of which parameters [are] critical or no
direction as to which of many possible choices is likely to be successful.”’)).
In this case, the Examiner has provided a reasoned basis for his
determination that one of ordinary skill in the art at the time of the invention
would have been motivated to select KH2PO4 as a suitable stabilizer in
Liao’s compositions (Answer 5). In particular, the Examiner points out that
both Liao and Gallagher teach that suitability of a particular compound for
use as a stabilizer and the determination of how much is to be used may be
readily determined (Findings of Fact 6 and 11) (Answer 4-5). Liao teaches
that use of a stabilizer material is preferable in thermoplastic compositions
containing a polyester and a polycarbonate resin and lists acidic phosphate
salts among the preferred stabilizer (Finding of Fact 5). Likewise, Gallagher
specifically discloses compositions comprising, inter alia, 20-90 wt% of a
heteropolymer thermoplastic resin blend and “an effective amount of a
stabilizer selected from phosphites, acidic phosphate salts, phosphate salts of
Group IB or Group IIB metal and phosphorous oxoacids” (Finding of Fact
12). The Examiner further notes that both Liao and Gallagher specifically
list potassium dihydrogen phosphate as a suitable acidic phosphate salt
(Findings of Fact 6 and 13) (Answer 4). Thus, contrary to Appellant’s
contention, we are in agreement with the Examiner that one of ordinary skill
in the art, upon consideration of Liao and Gallagher, would have been
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