Appeal No. 2005-0112 Page 3
Application No. 09/737,004
(d) a wetting agent.
We affirm substantially for the reasons set forth by the Examiner and add the following
primarily for emphasis.
OPINION
According to Appellant, no prima facie case of obviousness has been established because
Hu does not teach the present invention or the surprising beneficial effects thereof, namely,
improved removal of deposits on contact lenses (Brief, p. 7). This is because, according to
Appellant, Hu does not teach dual cleaning agents for improved removal of lens deposits, in
addition to comfort agents and wetting agents, as is claimed in the present invention. (Id.).
Appellant argues that compositions effective in preventing deposits on contact lenses (Hu) are
not necessarily effective in removing deposits from contact lenses and, therefore, one would not
have been obvious in view of the other (Id.).
Appellant’s argument is not convincing because it neglects the nature of both the claims
and the prior art. The claims are directed to a composition. Consequently, as properly
interpreted, claim 1 is directed to a composition that contains the specified ingredients at any
time from the moment at which the ingredients are mixed together. See Exxon Chem. Pats., Inc.
v. Lubrizol Corp., 64 F.3d 1553, 1557, 35 USPQ2d 1801, 1804 (Fed. Cir. 1995), cert. denied,
518 U.S. 1020 (1996). That the prior art has a different reason or motivation to combine the
ingredients is of no moment as long as there is a reason, suggestion, or motivation to make the
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