Application of Leroy P. Wahl and Lynn C. Adolphson

SMITH, Judge

(dissenting).

Despite its spectacular advances, chemistry remains a most empirical science. By the process of experimental trial and error a new result is achieved. Applying hindsight evaluation, the majority finds that “selection of desired ranges here by routine tests would be an obvious expedient.” I find nothing in the record to suggest that the claimed invention was the result of “routine tests.” This characterization of appellants' efforts appears to have had its genesis in the examiner’s mind. In the absence of any evidence to the contrary, I question seriously whether a) the selection of melamine formaldehyde resins from the thousands of resins available, b) the combination of it with a vegetable protein adhesive and c) the specific proportions here disclosed would have resulted from “routine tests.”

What is there, other than a hindsight reconstruction of the prior art, to make appellants’ invention obvious to one of ordinary skill in this art ? I find nothing and am unwilling to eliminate from section 103 the requirement that obviousness must be determined as of the time the invention was made. As I understand it, this requires that we must evaluate the art as if appellants’ suggestion had not been made. We must find in that art the teachings to a person of ordinary skill which would make the invention obvious to such person.

Here, it seems to me the invention resides in appellants’ intelligent appreciation of the problem which faced the art prior to -their work, their intelligent selection of particular materials to solve this problem having in mind in so doing both desirable and undesirable properties, and finally bringing together a particular *1023combination of such materials. I am willing to concede that once appellants have taught the art what the problem was and have disclosed their selection and combination of materials to solve the problem — that at this point, but not until this point — the invention may become a matter of “routine testing.” But one simply does not go into a chemical laboratory and begin a hit and miss mixing of this with that as a routine exercise. The majority here has failed to separate the intellectual aspects of the invention in issue from a particular embodiment of these aspects. Thus it reduces the concept of the “subject matter as a whole” of section 103 to nothing more than a matter of “routine” testing, whatever this may mean.

From the art here, it was appellants, and appellants only, who perceived the problem to be solved and who suggested a new and unobvious combination of known materials for their specific chemical and physical properties. I would, therefore, reverse the decision below.