Appeal No. 1996-3794 Page 7
Application No. 08/212,698
can be used to inactivate the HTLV virus in human blood. As the nonoxynol-9 being the
active ingredient, it would have been within the skill of the art to modify the composition by
the addition of anionic surfactant, stabilizer and buffer. See Supplemental Examiners
Answer, pages 5 and 6. We disagree.
A proper analysis of the claimed invention under § 103 requires consideration of two
factors. The initial question is whether the prior art would have suggested to those of
ordinary skill in the art that they should make the claimed invention and whether the prior art
would have revealed that in so doing or carrying out, those of ordinary skill would have had a
reasonable expectation of success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991). Our findings indicate with respect to the first factor, no suggestion or
teaching in the prior art of Hicks for the presence of an anionic surfactant, a stabilizer or a
buffer. The absence of that suggestion in and of itself is sufficient to conclude that no prima
facie case of obviousness had been established. Accordingly, we do not sustain the
rejection under § 103.
DECISION
The rejection of claims 13 through 22 and 26 through 34 under 35 U.S.C. § 103 as
being unpatentable over Hicks is reversed.
The rejection of claims 13 through 22 and 26 through 34 under 35 U.S.C. § 112, first
paragraph as failing to adequately teach how to make and/or use the invention is reversed.
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