Appeal No. 95-4491
Application No. 07/864,210
of the instant invention would have been motivate
[sic, motivated] to combine hyaluronic acid and
chondroitin sulfate and to use the resulting
composition for the protection of eyes. The above
rejection is based on the well established
proposition of patent law that no patentable
invention resides in combining old ingredients of
known properties where the results obtained thereby
are no more than the additive affects [sic, effects]
of the ingredients.
We disagree with appellants that the references, namely
Healon and Drugs in Japan, disclose different utilities, and
therefore, were not properly combined. In contrast to
In re Geiger, 815 F.2d 686, 2 USPQ2d 1276 (Fed. Cir. 1987),
the teachings in Healon and Drugs in Japan provide a
suggestion supporting their combination. Both references
disclose that their compositions protect corneal tissue from
injury. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ
1069, 1072 (CCPA 1980) (“[i]t is prima facie obvious to
combine two compositions each of which is taught by the prior
art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same
purpose"). Furthermore, there is no reason to believe that
resulting injury to corneal tissue during surgery differs from
injury to corneal tissue caused by other trauma. See
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