Appeal No. 95-1189
Application No. 07/800,471
(2) Kleschick et al are absolutely devoid of any disclosure that
their herbicides, overlapping those in Appellants’ Formula I, required
the presence of a safener. In fact, the Examiner cited Kleschick et al
for the very purpose of showing that such herbicides could be used
without a safener and
(3) Neither Brinker et al nor Kleschick et al contain any disclosure
whatever that their respective teachings could be/or should be adapted
to or combined with the teachings of the other.
B. Analysis
We reverse.
The examiner relies on the combination of Brinker and Kleschick in holding that the
claimed subject matter would have been prima facie obvious. The Federal Circuit has
delineated the standard for establishing a prima facie case under § 103 based on a combination
of references:
Where claimed subject matter has been rejected as obvious in view of
a combination of prior art references, a proper analysis under § 103
requires, inter alia, consideration of two factors: (1) whether the prior
art would have suggested to those of ordinary skill in the art that they
should make the claimed composition or device, or carry out the
claimed process; and (2) whether the prior art would also have
revealed that in so making or carrying out, those of ordinary skill
would have a reasonable expectation of success. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). Both the suggestion and the reasonable expectation of success
must be founded in the prior art, not in the applicant's disclosure. Id.
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
In our view, the person having ordinary skill in would have recognized that it might
be beneficial to use antidotal compounds with some of Kleschick’s herbicides for some crops.
For example, the post emergent application of herbicide A is taught to reduce sorghum
growth by 50%. Kleschick, Example 119, cols. 137-138, compound 157. This is clearly an
undesirable effect. Brinker teaches that the use of an antidote decreases the toxicity against
crops while maintaining high toxicity against weeds. For example, Brinker discloses that
13
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007