Appeal No. 95-0523
Application No. 07/885,490
degraded in the digestive system. The examiner draws no
comparison between the lipase degradation which Tang teaches
as occurring in the digestive system after formula is ingested
and any protease or polysaccharide degradation taking place in
the digestive system.
It is well-established that hindsight shall not form
the basis of a conclusion of obviousness under 35 U.S.C. §
103. “Both the suggestion and the expectation of success must
be founded in the prior art, not in the applicant’s
disclosure.”
In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988). As the Federal Circuit stated in Sensonics,
Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570, 38 USPQ2d 1551,
1554 (Fed. Cir. 1996):
To draw on hindsight knowledge of the
patented invention, when the prior art
does not contain or suggest that knowledge,
is to use the invention as a template for
its own reconstruction - an illogical and
inappropriate process by which to determine
patentability. . . . The invention must be
viewed not after the blueprint has been
drawn by the inventor, but as it would have
been perceived in the state of the art that
existed at the time the invention was made.
[citations omitted]
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