Appeal No. 95-3765
Application No. 08/084,388
elements from the cited prior art references for combination
in the manner claimed. See In re Rouffet, 149 F.3d 1350,
1358-59, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Warner, 379
F.2d at 1016, 154 USPQ at 177 ("[w]here the invention sought
to be patented resides in a combination of old elements, the
proper inquiry is whether bringing them together was
obvious.") There are "three possible sources for a motivation
to combine references: the nature of the problem to be solved,
the teachings of the prior art, and the knowledge of persons
of ordinary skill in the art." See Rouffet, supra.
The examiner has failed to explain why one of ordinary
skill in the art would have added metal oxide to the fatty
acid binder of Dunski. Dunski employs the fatty acid as a
binder and does not disclose or teach that any further
reaction is desired. There is no disclosure or suggestion in
the cited prior art that metal oxides could be used as a
binder with metal soap pellets. The nature of the problem to
be solved by appellant (specification, page 3, lines 1-6) is
not addressed by the cited prior art. The examiner does not
refer to any knowledge of persons of ordinary skill in the art
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