Appeal No. 2004-0394 Page 12
Application No. 09/915,467
alternatives may exist does not preclude the development of a new model that is
obvious over the prior art. See In re Beattie, 974 F.2d 1309, 1312-13, 24 USPQ2d
1040, 1042 (Fed. Cir. 1992) (holding that an alternative to a well-entrenched theory
does not preclude a finding of obviousness because the recommendation of a new
system “does not require obliteration of another”). For this same reason, we disagree
with appellant’s assertion (Request, page 6), “if an inventor(s) truly believes they have
satisfied a long-felt need, they would appear disinclined to spend further effort on an
already-completed task.” On this record, the combination of prior art relied upon
provides an obvious alternative to Gaull.
VII. The prior art relied upon provides a suggestion to combine:
Appellant is correct (Request, page 5) in that a suggestion to combine must be
identified in the prior art of record. In re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d
1430, 1433-1434 (Fed. Cir. 2002). For the reasons set forth in the Decision, we believe
that a suggestion to combine is set forth in the prior art relied upon. For his part,
however, appellant fails to state with particularity the reason why he believes the
Decision fails to identify a suggestion to combine the prior art relied upon. 37 CFR
§ 1.197(b). To the contrary, the Decision recognizes (see e.g., bridging paragraph,
pages 5-6):
“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Based on
the evidence set forth above, we find that it would have been prima facie
obvious to a person of ordinary skill in the art at the time the invention was
made to package a contraceptive formulation and/or device together with
isotretinoin (Accutane), and label said composition according to the official
labeling information set forth in the PDR.
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