Appeal No. 94-3867
Application 07/808,075
the basis of the “generic disclosure of Sokol, which teaches that any surfactant protein can
be combined with fatty acid component and that any such conjugated material will be
useful as a surface active agents [sic].” We disagree.
As stated in Pro-Mold & Tool Co. V. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996):
It is well-established that before a conclusion of obviousness may be made
based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.
Here, apart from reference to appellants’ disclosure of the present invention, we find no
such reason, suggestion, or motivation which would have lead one of ordinary skill in the
art to combine the disclosures of Whitsett and Sokol in the manner proposed by the
examiner. The examiner has not identified why one of ordinary skill in the art would have
any reason to modify the SP-C protein of Whitsett in the first place. Furthermore, the
examiner’s reliance solely upon the “generic” teaching of proteins in Sokol is highly
suspect, especially after the decisions in In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed.
Cir. 1994) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992).
In short, it is our view that the “glue” which holds the proposed combination of references
together comes only from appellants’ disclosure, not the applied prior art.
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007