Appeal No. 2005-2267 Page 5
Application No. 09/870,899
from the cited references, not from the application’s disclosure. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
For the foregoing reasons, it is our opinion that the examiner has failed to
provide the evidence necessary to demonstrate that any benefit would be
obtained from feeding female swine a marine animal product comprising C20 and
C22 omega-3 fatty acids or esters thereof, as required by appellants’ claimed
invention. At best, the evidence of record indicates that no benefit would be
expected. Accordingly, we find no suggestion in the prior art relied upon to
combine the teachings of Boudreaux with those of Fritsche.
We recognize the examiner’s reliance on section 2123 of the Manual of
Patent Examining Procedure (MPEP), specifically, the examiner’s reliance on
Celeritas Technologies Ltd. V. Rockwell Internaitonal Corp., 150 F.3d 1354,
1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998). Answer, page 13. As we
understand it, the examiner relies on this section of the MPEP to demonstrate
that Fritsch does not teach away from the claimed invention. Id. As the
examiner points out, the Celeritas court “held that the prior art anticipated the
claims even though it taught away from the claimed invention.” Id., emphasis
added. The examiner, however, failed to explain why this holding in Celeritas,
which relates to anticipation, would have any effect on the obviousness rejection
presented for our review on this record. The only other case cited in the section
of MPEP 2123 relied upon by the examiner is Merck & Co. v. Biocraft
Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert denied, 493 U.S.
975 (1989). As the examiner points out Merck, sets forth that “[a] reference may
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