Ex Parte Johnson et al - Page 6



                 Appeal 2007-0907                                                                                      
                 Application 10/159,367                                                                                

                 The § 103 Rejection                                                                                   
                        According to the Examiner, “[i]t would have been obvious to a person                           
                 of ordinary skill in the art at the time of the invention to have formulated a                        
                 defoaming composition, as taught by Johnson . . ., which contained a                                  
                 hydrotrope, such as glycerine, because such foaming compositions fall                                 
                 within the scope of those taught by Johnson” (Answer 4).                                              
                        In response, the Appellants argue that “Johnson clearly does not teach                         
                 or suggest that the use of glycerine would result in a composition having low                         
                 or no recordable VOC’s [i.e., volatile organic compounds]” (Br. 12).  In the                          
                 Appellants’ view, “since Johnson clearly did not recognize appellants’                                
                 problem; it would be unreasonable and improper to interpret Johnson as                                
                 suggesting a solution to same” (id.; see also Reply Br. 7).                                           
                        This argument is not persuasive because it is premised on the                                  
                 incorrect belief that an obviousness conclusion must be predicated on prior                           
                 art teachings of the particular problem addressed by the inventor.  As the                            
                 Supreme Court has recently explained, in determining whether the subject                              
                 matter of a claim would have been obvious, neither the particular motivation                          
                 nor the avowed purpose of the inventor controls.  What matters is the                                 
                 objective reach of the claim.  If the claim extends to what would have been                           
                 obvious, it is invalid under § 103.  KSR Int’l v. Teleflex, Inc., 127 S. Ct.                          
                 1727, 1741-42, 82 USPQ2d 1385, 1397 (2007).                                                           
                        Thus, the Examiner’s obviousness conclusion is not improper simply                             
                 because Johnson contains no teaching or suggestion of the VOC problem                                 

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