Appeal No. 2000-1433 Application No. 09/027,074 ring, such as sulphonamido, alkylsulphonyl used in the examples of Chapman . . . , other groups [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 thePage: Previous 1 2 3 4 5 6 7 NextLast modified: November 3, 2007