Appeal No. 95-3461
Application 08/056,076
examiner must identify a reason, suggestion, or motivation which would have led an
inventor to combine those references. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629, (Fed. Cir. 1996).
2
Here, in relevant part the examiner proposes to modify the pressure-sensitive
adhesive layer 17 of Cleary which can contain a drug by incorporating the hydrated
inorganic silicate described in Johnson. See, e.g., column 4, lines 13-35, of Johnson. As
stated at page 4 of the Examiner’s Answer,
Accordingly, it would have been obvious to one of ordinary skill in the art at
the time the invention was made to use the particulate phase of Johnson et
al. in the hydrophobic phase of Cleary et al. Motivation lies in Johnson et al.
who clearly suggests use of the matrix comprising the particulate material in
devices including transdermal patches (see especially Johnson et al. at
column 14, lines 20-23).
In our view, the reason given by the examiner for combining the two references in
this manner, i.e., Johnson suggests use of silicate in transdermal patches, is premised
upon a too expansive reading of the references. Taken to its logical conclusion, the
examiner’s so-called motivation means that it would have been prima facie obvious to use
any material used in a specific transdermal device in any other transdermal device. We do
not subscribe to such a sweeping generalization. Rather, the total disclosure of the
2The examiner relies upon Kon for its description of specific active agents, not the
silicate filler required by the claims on appeal.
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