Appeal No. 96-1852
Application No. 08/016,931
concur with appellants that the prior art presented by the
examiner fails to establish a prima facie case of obviousness
for the claimed subject matter. Accordingly, for essentially
those reasons expressed by appellants in their Brief, we will
not sustain the examiner's rejection.
The examiner does not dispute appellants'
characterization of the prior art as teaching compositions and
methods of removing protein deposits on soiled contact lenses
with compositions that are not ophthalmically acceptable.
Rather, it is the examiner's position that to modify a prior
art composition to render it ophthalmically acceptable and to
use it to inhibit the formation of proteinaceous material
instead of removing such material are "within the skill of the
artisan" (page 5 of Answer). However, the fatal flaw in the
examiner's reasoning is that the proper test for obviousness
under 35 U.S.C. § 103 is not what one of ordinary skill in the
art could have accomplished if he was inclined to do so, but,
rather, does the prior art provide a teaching or suggestion of
the claimed invention. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). In the present case, we
fully agree with appellants that none of the applied prior
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