Appeal No. 95-1189
Application No. 07/800,471
antidote A significantly decreases the toxicity of various herbicide compounds to sorghum in
preemergent application while maintaining high toxicity against some weeds. Brinker,
example 41, p. 146, lines 6-16 and pp. 164 - 173, antidote 3. Thus, the person having
ordinary skill in the art would have recognized that the use of antidote compounds such as
those taught by Brinker might be useful in diminishing the toxicity of some herbicides. From
the combined teachings of the references the person having ordinary skill in the art would
recognize that the effectiveness of herbicide A might be improved by the use of antidotes such
as those taught by Brinker. It would therefore have been “ obvious to try” the Brinker
antidotes with herbicide A and Kleschick’s other disclosed herbicides which fall within the
scope of applicants’ claims.
However, "obvious to try" does not constitute obviousness. In re O'Farrell, 853 F.2d
894, 903, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988). A general incentive does not make
obvious a particular result. In re Deuel, 51 F.3d 1552, 1559, 34 USPQ2d 1210, 1216 (Fed.
Cir. 1995). The combined teachings of the references do not provide information that would
give the hypothetical person of ordinary skill in the art a reasonable expectation of success
that the Brinker compounds, such as antidote A, would decrease the toxic effects of the
herbicides in applicants’ claims. We note that Brinker does not appear to indicate (and the
examiner has not identified a part of Brinker indicating) that Brinker’s antidote compounds
would reasonably be expected to be antidotal when used with the specific herbicides set out
in applicants’ claims. The herbicide compounds taught by Brinker which are closest to the
compounds taught by Kleschick appear to be the sulfonylureas identified at page 452, lines
36-42. While Kleschick also teaches sulfonylurea compounds useful as herbicides (see
2
Kleschick, col. 6, lines 39-50 ), the compounds set out in applicants’ claims are not
2 Note particularly that V (see finding 16) in Kleschick’s general formula may be di C -C
1 4
alkylaminocarbonyl.
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