Appeal No. 95-2879
Application 08/085,657
That is, the combined teachings of the references must suggest
that a sulfonyl urea which comprises both a substituted phenyl
(attached to the -NH) and an aromatic (attached to the SO )
2
would possess the referenced biological property. We find the
suggestion for a compound having the claimed limitations only
in the appellants’ disclosure. Accordingly, we agree with the
appellants, that the examiner has relied on impermissible
hindsight in making his determination of
obviousness. In re Fritch, supra; Interconnect Planning Corp.
v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir.
1985) (“It is impermissible to engage in hindsight
reconstruction of the claimed invention, using the applicant’s
structure as a template and selecting elements from references
to fill the
gaps”). W.L. Gore, 721 F.2d 1540, 1553, 220 USPQ 303, 312-313
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)(“To imbue
one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references
of record convey or suggest that knowledge, is to fall victim
to the insidious effect of a hindsight syndrome wherein that
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