Appeal 2007-1905
Reissue Application 10/931,249
Patent 6,444,720 B1
1 Bayer seeks to limit the obviousness inquiry to its "problem," Bayer's
2 argument is foreclosed by KSR, 82 USPQ2d at 1398. Moreover, the
3 argument was foreclosed prior to KSR. See (1) In re Dillon, 919 F.2d 688,
4 16 USPQ2d 1897 (Fed. Cir. 1990) (en banc) (diesel composition invented to
5 reduced pollution on burning held obvious because same composition would
6 have been obvious to reduce freezing in valves when diesel pumped during
7 cold weather) and (2) In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309,
8 1311 (Fed. Cir. 1996) (reason to combine prior art references does not have
9 to be identical to that of the applicant to establish obviousness).
10 The Examiner's rejection is adequately supported by the evidence.
11 Bayer has used a known polyol for its intended purpose to make rigid
12 open-cell polyurethane foams in accordance with well-established
13 procedures for making rigid open-cell polyurethane foams. To grant Bayer a
14 patent based on Bayer's use of a known polyol for its intended purpose
15 would mean that one skilled in the art would no longer be able to use a
16 known "tool" for its intended purpose. Bayer, of course, in its pre-KSR
17 Appeal Brief and Reply Brief, asserts that "motivation" is lacking in the
18 prior art. KSR forecloses any argument that an explicit prior art
19 "motivation" is needed. Nevertheless, KSR notes that there is no necessary
20 inconsistency between the idea underlying the Federal Circuit's teaching-
21 suggestion-motivation (TSM) test and a Graham analysis. KSR, 82 USPQ2d
22 at 1397-98. Under KSR, where so-called explicit "motivation" is lacking, an
23 invention may still be obvious. However, where the prior art gives one
24 skilled in the art explicit reasons for using a particular element (e.g., the
25 properties one would expect when using Heuvelsland's polyols), that reason,
14
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: September 9, 2013