Appeal No. 94-0291
Application 07/490,760
ketone, methylisoamyl ketone, 4-t-amylcyclohexanone and methylnonyl ketone. Id., col. 2, lines
16-20.
The examiner points out that Freeman teaches that compositions containing alicyclic
ketones of 6-20 carbon atoms are effective for repelling animals. From this teaching the examiner
concludes that
[i]t would have been obvious to one of ordinary skill in the art to substitute piperitone and
pulegone, alicyclic ketones of 10 carbons each, for the animal repellents of Freeman which
teaches similar alicyclic ketones for use as animal repellents with a high expectation that
said materials would function as suggested by Freeman, i.e. as repellents [Answer, p. 3].
We disagree. As developed in the Brief, there are significant structural differences
between pulegone and piperitone and the ketones disclosed by Freeman. For example, we direct
attention to the structural comparisons set forth on pp. 4-5 of the Brief. On this record, we do
not find that the examiner has even begun to establish that, based on the teachings of Freeman,
one of ordinary skill in the art would have found it obvious to select the claimed compounds for
use in repelling animals. Rather, we only find sweeping statements by the examiner, such as
“[p]iperitone and pulegone clearly fall within the scope or general subject matter of those
compounds disclosed by the reference [Freeman].” Answer, p. 4, lines 11-12. See also, the
supplemental Answer, para. bridging pp. 1-2. Such statements do not indicate the motivation, if
there is any, for a person having ordinary skill in the art to use pulegone and piperitone to repell
mammals. Here, the only teaching we find that ties the claimed method of using pulegone and
piperitone to the teachings of Freeman, is the appellants’ disclosure. Thus, in our opinion, the
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007