Appeal No. 96-2324
Application No. 08/071,963
The weakness in the examiner's position, however, is an
inadequate evidentiary foundation to support a conclusion of
obviousness of claims reciting ingredient (2). In relevant
part, claim 39 defines a fungicide composition which is a dry
blend formulation comprising
(2) between about 0.5-20 weight percent of a
compatibility enhancing ingredient selected from the
group consisting of water-soluble polyhydroxy
compounds which are in solid form at a temperature
below about 10EC.
Mannitol is exemplary of a compatibility enhancing ingredient
meeting the terms of claim 39 (specification, page 7, line 1).
Citing the Merck Index, 10th ed., Monograph No. 5569, and
Van Nostrand, page 85, the examiner argues that it would have
been obvious to add mannitol to solid fungicidal compositions
known in the art, e.g., the fungicidal compositions of
Duyfjes, as an anticaking and free-flow agent. We disagree.
Motivation in the prior art to combine references does
not have to be identical to that of the applicant to establish
obviousness. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309,
1311 (Fed. Cir. 1996). Nevertheless, the examiner has the
burden of establishing adequate reason, suggestion, or
motivation to combine references in such manner to arrive at
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