Appeal No. 1995-3054
Application No. 08/059,384
of the cited references which suggest or teach the
combination of references and modifications thereof
asserted by the Examiner in her search for
appellants' invention. The Examiner has not done
this in the record.
While we recognize that the reactions disclosed in
Hendrickson are known reactions, we agree with appellants that
there is no suggestion in Hendrickson to perform the disclosed
reactions in the order claimed by appellants to produce 2-
chloro-5-chloromethyl-pyridine. Furthermore, the teachings in
Lindel and Jelich fail to cure the deficiencies of
Hendrickson. Without the benefit of appellants' disclosure
there would have been no motivation to combine the teachings
of Hendrickson, Lindel and Jelich as suggested by the examiner
to arrive at appellants' claimed process. See In re Gorman,
933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991) (in a
determination under 35 U.S.C. § 103 it is impermissible to
simply engage in a hindsight reconstruction of the claimed
invention, using the applicant's structure as a template and
selecting elements from references to fill the gaps; the
references themselves must provide some teaching whereby the
applicant's combination would have been obvious).
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