Appeal No. 1997-2209
Application No. 08/179,196
more than one prior art reference would have been necessary
for one of ordinary skill in the art to arrive at the
appellants’ claimed subject matter as recited in appealed
claim 1. None of the applied prior art references provide any
teaching, suggestion, or incentive to select the appellants’
claimed copolymer having specific comonomer ratios from Urano
and then to combine it with the appellants’ claimed
dissolution inhibitor having formula (II) from the numerous
compounds disclosed in Yamanaka. At best, the references
might establish that it would have been “obvious to try”
various combinations of known polymers and dissolution
inhibitors, including the specific combination recited in the
appealed claims. But this is insufficient to meet the legal
standard under 35 U.S.C. § 103 because obviousness cannot be
established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching,
suggestion, or incentive supporting the combination. In re
Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987); ACS Hospital Systems, Inc. v. Montefiore Hospital, 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
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