Appeal No. 2001-1725
Application 09/009,536
Further, Yang is said to teach a combination of Bifidobacterium strains in food
producing methods, used alone or in combination with two or more lactic acid bacteria
including specifically Lactobacillus species bulgaricus, acidophilus, and casei. The
combination of strains is said to be suggested for a variety of fermentation processes,
including soy milk. (Examiner’s Answer, page 3, lines 19-24).
The Examiner thus concludes that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to have included the Yang
combination of bacterium in the process of Matsuura as they are taught to be useful in
fermenting processes. (Examiner’s Answer, page 4, lines 7-17).
The Appellants, on the other hand, contend that no prima facie case of
obviousness has been established “since the cited references fail to contain some
teaching or suggestion to modify or combine the references” (Appeal Brief, page 11,
lines 3-4) and that “the cited references in combination do not teach or suggest the
invention as a whole, including all the limitations of the claims” (Appeal Brief, page 12,
lines 13-14).
We address the motivation component of the prima facie case of obviousness
first. It is beyond dispute that 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
applicants. See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir.
1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). When
obviousness is based on the modification of a prior art reference, there must be a
showing of a suggestion or motivation to modify the teachings of that reference. See
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