Appeal No. 2001-0600
Application No. 08/584,776
the requirement to provide reasons in support of the findings of
obviousness”). In this regard, the examiner relies on his
conclusion that the dyes of the secondary references are
structurally similar to the dye of the admitted prior art. The
examiner has not, however, established sufficient similarity
between the dyes to support this conclusion. Appellant’s brief
identifies numerous differences between the dye having the
formula disclosed on page 1 of the specification and those of the
secondary references. See Appeal brief, pages 9-15. The
examiner has failed to address these differences.
At best, the examiner has established that it might have
been obvious to have tried to synthesize the $ modification of
the admitted prior art dye. See In re Merck & Co., Inc., 800
F.2d 1091, 1097, 231 USPQ 375, 379 (Fed. Cir. 1986) (citation
omitted) ("[O]bvious to try is not the standard of 35 U.S.C. §
103.") Thus, we are in agreement with appellant that the
examiner’s rejections are based on improper hindsight
reconstruction (Appeal brief, page 16). See In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (“[T]he best
defense against the subtle but powerful attraction of a
hindsight-based obviousness analysis is rigorous application of
the requirement for a showing of the teaching or motivation to
combine prior art references.”)
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007