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
6
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013