Appeal 2006-3047
Application 09/820,934
the inclusion of a detergent, i.e., a surfactant, in Niemiec’s cleansing
composition, Niemiec’s list of suitable detergents . . . is extensive . . . [and]
substantial picking and choosing from among numerous possible surfactants
would still be required in order to arrive at an alkyl glycoside” (id. at 17-18),
which, even so, “is a C6 monosaccharide . . . outside the scope of the
claims” (id. at 18). Appellants contend that the Examiner’s “position
disregards the fact that there is no motivation to select the alkyl glucoside
. . . plus the independent selection of Polyquaternium-10” (id.) from
Niemiec, much less “to substitute the [alkyl pentoside] compound of Bertho
in [Niemiec’s] composition” (id. at 19).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including: (1) the
scope and content of the prior art; (2) the level of ordinary skill in the art; (3)
the differences between the claimed invention and the prior art; and (4)
secondary considerations of nonobviousness, if any. Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).
The Supreme Court has recently emphasized 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” (KSR Int’l v.
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