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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