Appeal No. 2000-1433
Application No. 09/027,074
ring, such as sulphonamido, alkylsulphonyl used in the examples
of Chapman . . . , other groups [i.e., which are not electron
withdrawing] based upon their disclosed equivalence by the Bailey
. . . reference” (answer, page 4).
It is well established that, when prior art references
require selective combination to render obvious a subsequent
invention (as here), there must be some reason for the
combination other than the hindsight gleaned from the invention
itself. Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1143, 227 USPQ 543, 551 (Fed. Cir. 1985). That is, something in
the prior art as a whole must have suggested the desirability,
and thus the obviousness, of making the combination. Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984).
In the case at bar, the Chapman and Baily references applied
by the examiner would not have suggested the desirability, and
thus the obviousness, of combining their teachings in such a
manner as to replace the electron withdrawing groups on the
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