In Re Diane M. Dillon

The majority reverses the Board’s decision solely because in its view prima facie *1571obviousness under 35 U.S.C. § 103 (1982 & Supp. IV) can never be established when the specific problem and use described by the inventor are not addressed or suggested in the prior art.1 In this case, the prior art clearly would have motivated or taught the skilled artisan to produce the composition and method claimed by Dillon and, due to the absence of evidence showing non-obviousness, the Board determined, correctly in my view, that Dillon’s invention was not patentable. I therefore dissent.

Preliminarily, I…