Appeal No. 2000-1076
Application No. 09/084,904
of Chapman . . . , other groups, such as alkyl, . . . [i.e.,
which are not electron withdrawing] based upon their disclosed
equivalence by the Bailey . . . reference” (answer, page 4).
It is well established that, when prior art references
require selective combination to render obvious a subsequent
invention (as here), there must be some reason for the
combination other than the hindsight gleaned from the
invention itself. Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). That is,
something in the prior art as a whole must have suggested the
desirability, and thus the obviousness, of making the
combination. Lindemann Maschinenfabrik GMBH v. American Hoist
& Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed.
Cir. 1984).
In the case at bar, the Chapman and Baily references
applied by the examiner would not have suggested the
desirability, and thus the obviousness, of combining their
teachings in such a manner as to replace the electron
withdrawing groups on the phenyl nucleus of Chapman’s dye with
non-electron withdrawing groups as proposed by the examiner.
In support of his contrary viewpoint, the examiner relies upon
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