Appeal 2007-1565
Application 10/682,951
all of applicant’s claimed components since all of these components are
directly disclosed . . . as being useful” in a stabilizer composition (Answer
5). The secondary references are cited for their teaching of different beta-
aminocrotonates as PVC stabilizers (Answer 6).
Here, the Examiner has relied upon hindsight to arrive at the
determination of obviousness. “It is impermissible to use the claimed
invention as an instruction manual or ‘template’ to piece together the
teachings of the prior art so that the claimed invention is rendered obvious.”
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
“One cannot use hindsight reconstruction to pick and choose among isolated
disclosures in the prior art to deprecate the claimed invention.” In re Fine,
837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988). Reith
describes an amino alcohol as a PVC stabilizer, but lists the general formula
I compound and the halogen-containing oxy acid salt required by claim 1 in
a list of 13 optional classes of additional components. Sugawara and Yuichi
describe a composition which contains an amino alcohol and formula I
compound (Answer 6 (FF 10-12)), but does not disclose or suggest a
halogen-containing oxy acid salt. To establish obviousness, there must be
“an apparent reason to combine the known elements in the fashion” recited
in the claims. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, __, 82 USPQ2d
1385, 1396 (2007). The Examiner does not identify any reason in Reith,
Sugawara, or Yuichi which would have led the skilled worker to pick all
three components required by claim 1, and exclude zinc, to have produced
the claimed composition. Consequently, we reverse the rejection of claim 1-
5.
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