Appeal No. 2006-0185 Page 5
Application No. 10/159,253
Appellant argues that “[n]either Piccini nor Johnson, alone or in combination,
disclose or suggest that isoprenoid compounds, particularly farnesol, inhibit Candida
albicans.” Appeal Brief, page 10. Appellant argues that the examiner is “using improper
hindsight” by “overstating the disclosures of Piccini and Johnson, and making the
substitution of farnesol into the wipe of Piccini us[ing] information gleaned only from
Applicant’s disclosure, not the cited references or the knowledge of one skilled in the art
at the time of the invention.” Appeal Brief, page 8 (emphasis added).
As we understand it, Appellant’s argument is that Piccini would not have led those
skilled in the art to replace or substitute the cedrol disclosed by Piccini with the farnesol
disclosed in Johnson because motivation is not found in the references or from
knowledge of one skilled in the art at the time of the invention, but rather from
information gleaned from the specification. However, we do not find this argument
persuasive.
It has been held that “[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the claimed invention
was made and does not include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ
209, 212 (CCPA 1971). In this case, Johnson teaches that a solution comprising the
those concentrations correspond to 22.34 mg/liter to 11.17 grams/liter. The instant specification discloses
that an effective amount of an isoprenoid compound is 0.001% to about 2% by weight of solution (page 4,
lines 1-2). A concentration of 1% by weight of solution is 1 gram/100 milliliters, or 10 grams/liter.
Therefore, the range of effective amounts disclosed in the specification corresponds to 10 mg/liter to 20
grams/liter.
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