Appeal No. 2000-1568
Application 08/695,249
However, the examiner has failed to point to any teachings in the applied prior art,
or referred to knowledge generally available in the art, which would have suggested
combining the teachings of the references in order to produce a granular, biocontrol
formulation comprising (i) an aqueous suspension of a biocontrol agent selected from
the group consisting of bacteria, fungi, viruses, microsporidians, protozoa, nematodes,
and pathogenic agents thereof; (ii) a water absorbent material; (iii) a membrane
stabilization agent; and (iv) a granulating agent, wherein the membrane stabilization
agent is present in the range of about 10-65% by dry weight of the complete formulation.
Independent teachings of different elements present in the claims, standing alone, do not
provide a reason to combine said elements into a single formulation. At best, it appears
that the examiner is confusing the level of skill in the art with the teachings of the prior art.
In re Kratz, 592 F.3d 1169, 1175, 201 USPQ 71, 76 (CCPA 1979) (“There is a
difference between somehow substituting skill in the art for statutory prior art, as the PTO
attempts to do here, and using that skill to interpret prior art”).
Thus, on this record, we are constrained to agree with the appellants that the
examiner has engaged in impermissible hindsight in making his determination of
obviousness. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991)(“It is impermissible, however, simply to engage in a hindsight reconstruction of
the claimed invention, using the applicant’s structure as a template and selecting
elements from references to fill the gaps”); Interconnect Planning Corp. v. Feil, 774 F.2d
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