Appeal 97-2360
Application 08/234,495
2. Applicants argue that there is no suggestion,
reason, motivation or teaching in the prior art, as a whole,
to combine the teachings of the prior art to arrive at
applicants' process for determining the possible adulteration
of hydrocarbon products as set out in claims 21-29.
It is true that applicants place considerable reliance on
the argument that Simmonds does not teach the use of multiple
compounds "in differing amounts," an argument which seemingly
applies only to claim 27. Nevertheless, applicants also
present arguments which apply with equal force to all claims.
The principal difficulty with the examiner's rejections
is that they are based on impermissible hindsight.
Friswell is clearly within applicants' field of endeavor,
but uses dyes in amounts considerably larger than the amount
of tracer called for by applicants' claims.
We doubt whether Thompson involves applicants' field of
endeavor, or deals with the problem applicants' sought to
solve. Compare In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171,
174 (CCPA 1979) (discussion of analogous art and two-fold
test). In any event, Thompson's solution to leak detection
does not provide a necessary suggestion for its being combined
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