Appeal No. 2001-0934 Page 5
Application No. 09/294,483
alone make a process employing the reaction scheme obvious.” As appellants
correctly explain (id.), with reference to In re Brouwer, 77 F.3d 422, 425,
37 USPQ2d 1663, 1666 (Fed. Cir. 1996), “the fact that the starting materials
disclosed in the reaction scheme may be modified or substituted so as to
produce a product recited in the claim does not make a claimed process obvious
unless the prior art suggests the desirability of such a modification or
substitution.” Stated differently, there are no per se rules of obviousness.
In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995)
(“reliance on per se rules of obviousness is legally incorrect.”). Accord, Brouwer.
As appellants point out (id.), neither Iqbal or March “suggest the
desirability of reacting a thiol or thiolate with a halogen-DPP to produce the
desired products.” To make up for this deficiency the examiner relies on
Pfenninger. However, as appellants explain (Brief, page 8), “Pfenninger does
not provide any motivation for a person skilled in the art could [sic] to modify
Iqbal to use a (di)thiol or (di)thiolate with a halo-DPP to produce alkylthio- and/or
arylthio-substituted DPP pigment products.” Therefore, appellants conclude (id.),
“the [e]xaminer has connected the various references through hindsight
reconstruction of the invention.” We agree.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only
by the prior art references and the then-accepted wisdom in the
field. … Close adherence to this methodology is especially
important in cases where the very ease with which the invention
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