Appeal No. 2002-0448 Page 9
Application No. 09/194,824
polyglycol ethers), and then optimize the desired viscosity effects to
at least 2000 mPa as taught by Tesmann, because the [person of]
ordinary skill in the art would have had a reasonable expectation to
observe desirable viscosity characteristics of a reaction product for
their intended outcome.
As we understand the examiner’s argument, the combined teachings of
Pereira, Turchini and Tesmann would motivate a person of ordinary skill in the
art to react a hydroxycarboxylic acid with a polyoxylated alcohol and then
“optimize” this reaction product to a viscosity of one of the original reactants,
polyoxylated alcohol. While, in hindsight this may be a possible way to arrive at
appellants’ claimed viscosity, the examiner has failed to identify any evidence in
the combination of prior art relied upon to support his argument. 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
can be understood may prompt one “to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.”
…
Most if not all inventions arise from a combination of old elements.
… Thus, every element of a claimed invention may often be found
in the prior art. … However, identification in the prior art of each
individual part claimed is insufficient to defeat patentability of the
whole claimed invention. … Rather, to establish obviousness based
on a combination of the elements disclosed in the prior art, there
must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicant
[citations omitted].
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