Appeal No. 2000-0894
Application No. 08/437,884
Id.
Appellants argue that
the Examiner picked one reference that taught S-nitroso serum
albumin (i.e., Means), then picked one reference that taught a
peptide-serum albumin conjugate (i.e., Hawiger) and then picked
one reference that taught S-nitroso derivatives of ACE inhibitors
(i.e., Loscalzo), and then put the references together and asserted
that the combination rendered the present claims obvious. The
combination of references, however, does not produce the
presently claimed invention and does not provide any motivation to
arrive at the presently claimed invention.
Appeal Brief, page 9. Appellants also argue that the claimed method provides
unexpectedly superior results compared to prior art methods. See id., pages 7-8.
“In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based upon
the prior art. ‘[The Examiner] can satisfy this burden only by showing some
objective teaching in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead that individual to combine the relevant
teachings of the references.’” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d
1780, 1783 (Fed. Cir. 1992) (citations omitted). An adequate showing of
motivation to combine requires “evidence that ‘a skilled artisan, confronted with
the same problems as the inventor and with no knowledge of the claimed
invention, would select the elements from the cited prior art references for
combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif. Edison
Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed. Cir. 2000) (quoting In re
Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998)).
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