Appeal No. 2004-0339 Page 4
Application No. 09/462,678
(id., page 6) and “it would have been obvious . . . to add [the] flavonoids of Vester [to]
the nutritional composition of [Henningfield], with an expectation to provide a strong
antioxidant activity in plasma and also provide protection to the other antioxidant of
[Henningfield,] i.e., vitamin E from being oxidized” (id., page 4).
Appellants argue that Henningfield “does not even mention the oxidative stability
of vitamin E” (Brief, page 5), and, in any case, “the technical fields of [Henningfield] and
Vester are distinct and unrelated” (id.), as one “relates to a nutritional product for trauma
and surgery patients” while the other “describes a nutritional supplement specifically
designed for improving cardiovascular health” (id.). Appellants’ points are well taken.
We see nothing in Henningfield that suggests a recognition that oxidation of
vitamin E might interfere with the efficacy of the nutritional product. Moreover, while
Henningfield’s and Vester’s compositions are both nutritional in the sense that they are
ingested and metabolized, one is designed to serve as a food substitute, while the other
is merely a food supplement. In our view, the examiner has unduly focused on the very
limited common ground between Henningfield and Vester (i.e., both describe
compositions containing vitamin E), while completely ignoring their substantial
differences, and we agree with appellants that “one of ordinary skill in the art would lack
the motivation to combine [their] teachings (id., pages 4-5).
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000) (citations omitted):
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. [ ] Close adherence
to this methodology is especially important in cases where the very ease
with which the invention can be understood may prompt one “to fall victim
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