Ex Parte Fung et al - Page 9

               Appeal 2007-2028                                                                             
               Application 11/058,147                                                                       

               use the teachings of Cowan to modify the color of the absorbent pad-like                     
               structure, which, as previously discussed, is intended to be covered by                      
               conventional litter material in order to enhance its appearance” (Br. 18).                   
               Appellants argue that the Examiner’s assertion that determining the suitable                 
               amount of pigment or dye for use would have been routine amounts to an                       
               improper “obvious to try” rationale (id. at 18-19).  Appellants argue that                   
               because silica gel is yellow, one of ordinary skill in the art would not have                
               been motivated to change the color of Benjamin’s absorbent, since its                        
               ultimate destination was a litter box (Reply Br. 17).                                        
                      We are not persuaded by these arguments.  The Supreme Court                           
               recently rejected the idea that “obvious to try” is a per se improper standard               
               of obviousness.  KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397 (“The same                       
               constricted analysis led the Court of Appeals to conclude, in error, that a                  
               patent claim cannot be proved obvious merely by showing that the                             
               combination of elements was ‘obvious to try.’”).  Emphasizing a flexible                     
               approach to the obviousness analysis, the Court noted that “[a] person of                    
               ordinary skill is . . . a person of ordinary creativity, not an automaton.”  Id.             
               Thus, the analysis under 35 U.S.C. § 103 “need not seek out precise                          
               teachings directed to the specific subject matter of the challenged claim, for               
               a court can take account of the inferences and creative steps that a person of               
               ordinary skill in the art would employ.”  Id. at 1741, 82 USPQ2d at 1396.                    
                      In our view, one of ordinary skill, being one of ordinary creativity,                 
               would have recognized that it was desirable to have litter compositions and                  
               accessories with attractive appearances (e.g., for marketing purposes), even                 
               if they were ultimately to be covered by other materials.  We therefore agree                


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