Appeal No. 94-0291
Application 07/490,760
examiner has relied on “hindsight” to arrive at the conclusion the claimed method would have
been obvious over the applied prior art. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992); Interconnect Planning Corp v. Feil, 774 F.2d 1132, 1138, 227 USPQ
543, 547 (Fed. Cir. 1985).
The examiner also urges that the claimed method would have been obvious to one of
ordinary skill in the art over the combined teachings of Freeman and Inazuka. Inazuka is an
abstract which discloses that pulegone was found to be useful in repelling German cockroaches by
test tube and beaker methods. According to the examiner
[t]he compounds of Freeman and Inazuka are both alicyclic ketones and would have been
expected to possess similar repellent characteristics relative to mammals. Similarly, the
formulation of compositions for this purpose would have been obvious from the disclosure
of the Freeman reference [Answer, p. 3].
Here, we acknowledge that Inazuka discloses the repellent properties of pulegone with
respect to German cockroaches, however, we disagree with the examiner’s reasoning in reaching
her conclusion of obviousness. We find no teaching or suggestion in the combined teachings of
the applied prior art, and none has been pointed out by the examiner, which supports her
conclusion that the use of pulegone as a repellent for mammals “would have been obvious from
the disclosure of the Freeman reference.” Answer, p. 3. Accordingly, we find that the examiner
has not provided a sufficient basis for concluding that the claimed method would have been prima
facie obvious to one of ordinary skill in the art at the time the application was filed. A conclusion
of obviousness must be based on fact(s) and not unsupported generalities. In re Freed, 425 F.2d
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