Appeal No. 1999-0023
Application No. 08/374,907
any suggestion of a non-aqueous composition (brief, pages 5
through 9).
Based upon the examiner’s rejection rationale, we share
appellant’s point of view that the patent to Pregozen would not
have been suggestive of a substantially non-aqueous composition
to one having ordinary skill in the art. Throughout the
disclosure of Pregozen the patentee makes it abundantly clear
that an aqueous composition is used to practice the invention.
Thus, we readily perceive that nothing within the reference
document itself would have motivated one of ordinary skill to use
a substantially non-aqueous composition, as claimed, as a design
choice alternative or otherwise. Accordingly, when we set aside
in our minds the teaching in appellant’s underlying disclosure,
we readily discern that only reliance upon impermissible
hindsight would have enabled one of ordinary skill in the art to
effect the invention of appellant’s claim 3 based upon the
Pregozen patent. As to the Buck reference, it was not applied by
the examiner to address the non-aqueous limitation of claim 3 and
does not overcome the deficiency of the Pregozen teaching. Since
the prior art, as applied by the examiner, would not have been
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