1 (7)
2 One of applicant's principal arguments seems to be that hindsight is
3 being used to reject his claims. We disagree. Only prior art knowledge is
4 being used in connection with our rationale, as well as that of the examiner.
5 We believe that applicant fails to come to grips with the fact that one skilled
6 in the art uses known elements described in the prior art, indeed, we would
7 say is necessarily "motivated" to use those elements as needed. Why would
8 the hypothetical person skilled in the art close its eyes to the known
9 properties of CAB-O-SILŪ fumed silica? What applicant seeks to do is
10 secure a patent on the use of CAB-O-SILŪ fumed silica so that those skilled
11 in the fish lure art would be prevented from using a known material for its
12 known purpose to solve a known problem (minimize tackiness). Issuing a
13 patent to applicant on the claimed invention would "remove existent
14 knowledge from the public domain and restrict free access to materials
15 already available." The Supreme Court tells us that what applicant wants to
16 do is not permitted. Graham v. John Deere Co., 383 U.S. at 6, 86 S. Ct. at
17 688, 148 USPQ at 462; Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
18 U.S. 141, 146, 109 S. Ct. 971, 975, 9 USPQ2d 1847, 1850 (1989).
19 It is the duty of the Commissioner of Patents (now Director) and of
20 the courts in the administration of the patent system to give effect to the
21 constitutional standard by appropriate application, in each case, of the
22 statutory scheme of the Congress and the primary responsibility for sifting
23 out unpatentable material lies in the Patent Office. Graham v. John Deere
24 Co., 383 U.S. at 6 and 18, 86 S. Ct. at 688 and 694, 148 USPQ at 462 and
25 467. For all the reasons given above, we think the examiner's decision to
26 reject the claims properly "sifted out" applicant's unpatentable invention.
27
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