Appeal No. 2001-0452
Application 08/073,969
(Examiner’s Answer, paragraph bridging pages 3 and 4). Further, claims 38, 40, 45, 49,
54, 58, 63, and 67 stand rejected under 35 U.S.C. § 112, first paragraph, as based on a
non-enabling disclosure (Examiner’s Answer, page 4, first full paragraph); and claims 38
and 40 stand rejected under 35 U.S.C. § 112, second paragraph, as not particularly
pointing out and distinctly claiming the subject matter which applicants regard as their
invention (Examiner’s Answer, page 4, second complete paragraph).
On consideration of the record, we reverse each of the examiner’s rejections.
Discussion
This is not a close case, and we shall not belabor the record with extensive
comment.
Respecting the rejection under 35 U.S.C. § 103, the examiner argues that:
It would have been obvious to one skilled in the art at the time the invention
was made to have tried varying wt. % of 3-isothiazolinones as taught by
Segall et al. in combination with varying percentages of known stabilizing
compounds as taught by Segall et al. A skilled artisan would have been
motivated to do so by the prior art teachings in order to optimize conditions
for increased isothiazolinone stability and shelf-life. [Examiner’s Answer,
mailed May 17, 2000, page 5, last paragraph; emphasis added].
That argument, however, does not explain how a person having ordinary skill in the art
would have been led from “here to there,” i.e., from the disclosure of Segall alone or the
combined disclosures of Segall and Hart to the claimed subject matter considered as a
whole. Further, that argument is predicated on an incorrect standard of patentability. As
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