Appeal No. 1998-0472
Application No. 08/493,571
would be obtained or whether one skilled in the art would
have expected to achieve the same results or additive
results. Listing several compounds as interchangeable for
one purpose will not establish their equivalency for all
purposes, In re Jezl, 396 F.2d 1009, 1012, 158 USPQ 98, 100
(CCPA 1968). Moreover, appellant’s invention is concerned
with modification of polyhydric aromatic compounds in such a
way that the solubility in aromatic solvents of the
polycondensation products prepared therefrom is improved.
(specification, page 3, lines 14-16).
We note that “[o]bviouness cannot be established by
combining the teachings of the prior art to produce the
claimed invention, absent some teaching, suggestion or
incentive supporting the combination.” In re Geiger, 815
F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987). Here,
absent hindsight, the skilled artisan would not have found
it obvious to conduct appellant’s claimed reaction in the
presence of both oxalic acid and boric acid for the reasons
discussed above. Combining the two acids may have been
obvious to try, but this does not constitute the standard
for combining references under § 103. Id. at In re Geiger
815 F.2d at 687, 2 USPQ at 1278; cf. In re Wesslau, 353 F.2d
238, 241, 147 USPQ 391, 393 (CCPA 1965).
Hence, we reverse the rejection of claims 1-12 and 21
under 35 U.S.C. § 103 as being unpatentable over German
Patent Nos. 1,543,512 and 2,330,850, Oppenlaender, Nelson,
and Durairaj in view of Hoggins, McAllister, and Rothrock.
We also reverse the rejection of claims 19 and 20 under
35 U.S.C. § 103 as being unpatentable over German Patent
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