Ex Parte CHAPMAN et al - Page 4



         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 the                











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