Appeal No. 2001-1932
Application No. 08/829,512
thereof is unpredictable.
Appeal Brief, page 7. With respect to CA ‘849 appellants note
that while the reference discloses that R1 can be aryl, there is
no specific disclosure of R1 being phenol. Further, appellants
urge that the examiner has improperly relied upon hindsight
reasoning in combining these references. Id., pages 13-14.
In order to prevent the impermissible use of hindsight, “the
examiner must show reasons that the skilled artisan, confronted
with the same problems as the inventor and with no knowledge of
the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.” In
re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457-58 (Fed.
Cir. 1998) (emphasis added). It is not sufficient for the
examiner to rely on a high level of ordinary skill in the art to
provide the motivation for combining the teachings of the cited
references. See id. Rather the examiner must explain “what
specific understanding or technological principle within the
knowledge of one of ordinary skill in the art would have
suggested the combination.” Id.
In the present case, the examiner has merely identified
where in the prior art the individual components of the claimed
invention are taught and then relied on his own explanation as to
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