Appeal No. 1996-0906
Application No. 08/110,341
upon by the examiner] needed two separate formulated products; it was
cumbersome and it would be of limited applicability in practice.” The
examiner also ignores Thom’s objective (column 2, lines 4-24) of avoiding
exactly what the examiner relies upon Thom as teaching.
Appellants argue (Reply Brief, page 9) that ”[t]he examiner has
impermissibly relied on the Appellants’ own disclosure to piece together
claimed elements and to combine them as claimed, without any teaching or
suggestion of and in the fact of numerous teachings away from, doing so.” In
addition appellants argue (Reply Brief, page 9) that the “Matsuo
et al. transesterification method does not make up for the deficiencies of the
underlying combination.”
We emphasize that before a conclusion of obviousness may be made based
on a combination of references, there must have been a reason, suggestion or
motivation to lead an inventor to combine those references. Pro-Mold and Tool
Co. v. Great Lakes Plastics Inc., 75 F.3d at 1573, 37 USPQ2d at 1629.
On these facts, we agree with appellants that the only reason or suggestion to
modify the references to arrive at the present invention comes from appellants’
specification. Contrary to the examiner’s position, while Thom references as
background a prior art teaching of a lipase liquor for use in a soaking step, the
objective of Thom’s invention was to avoid this cumbersome process that is of
limited applicability in practice.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007