Appeal No. 2001-1668
Application 09/036,754
that the claimed invention encompassed by appealed claim 36 would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
We cannot reach the same conclusion with respect to appealed claim 37, and thus with
respect to claims 38 through 42 which depend thereon. Appealed claim 37 specifies that the
active substance is a polymer with ester groups. We fail to find any evidence in the record
relied on by the examiner which would have suggested to one of ordinary skill in this art that
the “hydrolyzable esters” of Bennett would include a polymer with ester groups when Fleming
utilizes formic acid esters. Thus, in the absence of evidence that one of ordinary skill in this art
would have used a polymer with ester groups as a pH adjusting agent, we must agree with
appellants (brief, page 10) that this specific requirement of claim 37 is not within the ordinary
skill of the art. Accordingly, we reverse the ground of rejection with respect to appealed claims
37 through 42. See In re Jones, 958 F.2d 347, 349-51, 21 USPQ2d 1941, 1943-44 (Fed. Cir.
1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s
speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have
been motivated to make the modifications of the prior art salts necessary to arrive at the
claimed . . . salt.”).
The examiner’s decision is affirmed-in-part.
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