Appeal No. 1998-1674 Page 3
Application No. 08/437,712
OPINION
As stated in In re Kotzab:
A critical step in analyzing the patentability of claims pursuant to section 103(a) is
casting the mind back to the time of invention, to consider the thinking of one of ordinary
skill in the art, guided only by the prior art references and the then-accepted wisdom in the
field.
* * *
Most if not all inventions arise from a combination of old elements. Thus, every
element of a claimed invention may often be found in the prior art. However, identification
in the prior art of each individual part claimed is insufficient to defeat patentability of the
whole claimed invention. Rather, to establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some motivation, suggestion or teaching
of the desirability of making the specific combination that was made by the applicant. Even
when obviousness is based on a single prior art reference, there must be a showing of a
suggestion or motivation to modify the teachings of that reference.
The motivation, suggestion or teaching may come explicitly from statements in the
prior art, the knowledge of one of ordinary skill in the art, or, in some cases the nature of
the problem to be solved. In addition, the teaching, motivation or suggestion may be
implicit from the prior art as a whole, rather than expressly stated in the references. The
test for an implicit showing is what the combined teachings, knowledge of one of ordinary
skill in the art, and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art.
In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000) (citations
omitted).
The Examiner seems to have succeeded in locating within Kacher each of the individual
chemical components of claim 13. Three of the components (a), (c) and (d), however, are described in
a list of synthetic surfactants that are taught as usable alone or in mixtures to improve bar firmness. The
Examiner has failed to demonstrate that there is a suggestion, anywhere in the prior art, which would
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007