Appeal No. 1998-2047
Application No. 08/400,559
allium plants as susceptible to S. cepivorum. Therefore, Smith would not have
motivated a person of ordinary skill in the art to practice the method defined by
the claims; i.e., to apply cyproconazole to allium seeds specifically.
The examiner also found a source of motivation in Appellant’s
specification, which discloses that “[o]nion plants are known to be particularly
prone to infestation by Sclerotium cepivorum (onion white rot).” It was not
unreasonable for the examiner to construe this passage as an admission
regarding prior art knowledge. An applicant’s admissions regarding what is
within the prior art can be relied on in an obviousness analysis. See Constant v.
Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed.
Cir. 1988) (“A statement in a patent that something is in the prior art is binding on
the applicant and patentee for determinations of anticipation and obviousness.”);
In re Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611 (CCPA 1975)
(Information that an applicant admits is in the prior art “may be considered ‘prior
art’ for any purpose, including use as evidence of obviousness under § 103.”).
However, the prior art of record in this case provides explicit motivation to
apply cyproconazole to onion seeds. We believe the better examination practice
is to rely on the prior art itself, whenever possible, rather than an applicant’s
admissions concerning the prior art. We therefore reverse the § 103 rejection of
record in favor of the rejection set forth below.
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