Appeal 2006-1223
Application 10/214,009
explicit teaching, suggestion, or motivation in the references themselves is
not the end of the obviousness analysis.
The Supreme Court has recently emphasized in KSR Int’l v. Teleflex
Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007), that “[t]he obviousness
analysis cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents” (id. at 1741,
82 USPQ2d at 1396). The Court reiterated “the need for caution in granting
a patent based on the combination of elements found in the prior art” (id. at
1739, 82 USPQ2d at 1395), particularly where there is “no change in their
respective functions” (id). That being said, the Court also emphasized that
“it can be important to identify a reason that would have prompted a person
of ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does” (id. at 1741, 82 USPQ2d at 1396).
Here, we find that Wagstaff teaches that “calcium propionate is a
source of propionic acid which is gluconeogenic” (Wagstaff, col. 3, ll. 8-9),
and “rapidly stimulate[s] glucose production [which] bring[s] the body [ ]
into metabolic balance so the hungry feeling goes away” (id. at col. 3, ll. 39-
42). We further find that Portman teaches that “[l]ong chain fatty acids are
[ ] potent releasers of cholecystokinin” (Portman, col. 6, ll. 60-64), and that
“[r]elease of cholecystokinin has [ ] been shown to be a satiety signal in
humans” (id. at col. 1, ll. 49-50).
We find, in other words, that both Wagstaff and Portman describe
compositions that produce a feeling of satiety, and we agree with the
Examiner that the “idea of combining [the compositions] flows logically
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013