Appeal No. 1997-2087
Application No. 08/203,837
1556, 225 USPQ 26, 31 (Fed. Cir. 1985). It is part of the "subject matter as a whole" which
should always be considered in determining the obviousness of an invention under 35
U.S.C. § 103. In re Nomiya, 509 F.2d 566, 184 USPQ 607 (CCPA 1975). It is rare that
one factor will control the obviousness conclusion, and all evidence should be taken into
consideration when making such a determination.
Appellant argues that he discovered the problem that the CDEC "disadvanta-
geously forms protein deposits” on the contact lens in the presence of hydrogen peroxide
(Appeal Brief, page 11). Appellant further argues that the discovery of the problem led to
the solution of including a cleaning enzyme component "in an amount effective to remove
both the protein deposits previously on the contact lens and the protein deposits formed
from the CDEC" in the claimed invention (Appeal Brief, page 5). In this context, appellant
also argues extensively that there is no motivation to combine the references in a manner
that will lead to the claimed invention because the prior art was not aware of the problem
discovered by appellant (Appeal Brief, page 13).
On the other hand, the examiner is of the opinion that the "Appellant's discovery of
the problem is immaterial because Appellant's method of addressing the problem is not
patentable" (Examiner's Answer, page 14). Further, the examiner states that the
components of the claimed invention "are well known in the prior art to be used either
separately or in various combinations for the purpose of disinfecting and cleaning a
contact lens" (Examiner's Answer, page 9). From this, the examiner concludes that "[t]he
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