Appeal No. 2001-0131
Application No. 08/977,110
Henman teaches in relatively general terms, that “both
phosphite...and diphosphonite...are good melt stabilizers” but
that “[t]he cyclic diphosphite...is much less efficient,
probably due to a tendency towards formation of an acid
phosphate by hydrolysis.” (Page 80.)
The examiner, however, has not identified any specific
motivation, suggestion, or teaching in the applied prior art
that would have led one of ordinary skill in the art to replace
the pentaerythritol phosphite described in Burns with the
specific phosphite compound recited in the appealed claims. In
this regard, Burns would have taught away from using any
phosphite other than pentaerythritol phosphites, because Burns
teaches that pentaerythritol phosphites in combination with
other component(s), have “excellent color stability” as we
discussed above.
In our view, it is only with the benefit of the appellants’
own disclosure that the examiner has arrived at a conclusion of
obviousness. In re Warner, 397 F.2d 1011, 1016, 154 USPQ 173,
177 (CCPA 1967) (“[W]here the invention sought to be patented
resides in a combination of old elements, the proper inquiry is
whether bringing them together was obvious and not, whether one
of ordinary skill, having the invention before him, would find
it obvious through hindsight to construct the invention from
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