Appeal No. 1998-3162
Application 08/453,149
combination with an acrylic copolymer since the combination of individually disclosed ingredients for
their stated purpose is authorized per In re Jansen [525 F.2d 1059, 187 USPQ 743 (CCPA 1975)]
and with the understanding that [Mohri] gives express authorization to blend the fluorine-containing
copolymer with other acrylic resins . . . and with a reasonable expectancy of success” (answer, page 4).
There is no support in Jansen for this proposition. Indeed, as appellants point out (brief,
IX.B.1.), there is no authority which supports the proposition that one of ordinary skill in this art could
have obviously arrived at a claimed chemical compound by simply choosing less than all of the staring
materials taught to be necessary by the reference to prepare the compound disclosed therein even in the
absence of evidence that there is an objective teaching, suggestion or motivation in the prior art to do
so. Here, no such evidence is of record. See In re Jones, 958 F.2d 347, 349-51, 21 USPQ2d 1941,
1943-44 (Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the
PTO’s speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have
been motivated to make the modifications of the prior art salts necessary to arrive at the claimed . . .
salt.”); In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(in banc)
(“This court . . . reaffirms that structural similarity between claimed and prior art subject matter, proved
by combining references or otherwise, where the prior art gives reason or motivation to make the
claimed compositions, creates a prima facie case of obviousness, and that the burden (and
opportunity) then falls on an applicant to rebut that prima facie case.”); In re Grabiak, 769 F.2d 729,
731-32, 226 USPQ 870, 872 (Fed. Cir. 1985) (“[W]e have concluded that generalizations should be
avoided insofar as specific chemical structures are alleged to be prima facie obvious one from the
other. . . . [I]n the case before us there must be adequate support in the prior art for the ester/thioester
change in structure, in order to complete the PTO’s prima facie case and shift the burden of going
forward to the applicant.”); In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 254-55 (CCPA 1979)
(“An obviousness rejection based on similarity in chemical structure and function entails the motivation
of one skilled in the art to make a claimed compound, in the expectation that compounds similar in
structure will have similar properties.”).
Therefore, it is clear that the examiner has resorted to hindsight gained from appellants’
specification and claims in order to reach the conclusion that the claimed invention was prima facie
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