Appeal 2007-2739
Application 11/106,321
and Pepe (Reply Br. 1-2). We do not agree. The Examiner found that claim
1 “differ[s] from Pepe et al. in avoiding the use of cracking catalyst but
us[ing] only ammonium and alkali and alkaline earth metal carboxylates as
cracking agent” (id.). The Examiner therefore clearly recognized that claim
1 excludes the cracking catalysts used by Pepe.
Appellants argue that Pepe’s failure to mention the combination of
elements recited in claim 1, despite the availability of Berger and Barsa to
the inventors of the Pepe patent, “can be seen as further evidence that the
Appellants[’] invention is not so obvious and that the Examiner has used
improper hindsight reconstruction to arrive at the claimed invention” (Reply
Br. 5-6).
We are not persuaded by this argument. When evaluating claims for
obviousness a “factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning. Rigid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007).
Moreover, as is often stated, any obviousness analysis by necessity involves
using hindsight, “but so long as it takes into account only knowledge which
was within the level of ordinary skill at the time the claimed invention was
made and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971).
As discussed above, we agree with the Examiner that one of ordinary
skill would have considered heating in the absence of alkoxide and tin
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