Appeal No. 1997-2087
Application No. 08/203,837
idea of combining these components flows logically from their having been individually
taught in the prior art" (Id.). The examiner additionally argues that "[t]he motivation to
structure the components is also clear from a reading of the prior art taken as a whole"
(Examiner's Answer, page 10). The examiner supports this contention by relying on the
individual teachings of the cited references and the "awareness" of the practitioner in the
art (Examiner's Answer, page 15).
We disagree. A review of appellant's claims indicates that the claimed
composition and method require a distinctive and particular structure that will allow the
active ingredients to be released in a specific sequence. The examiner has pointed to no
evidence that would lead a person of ordinary skill to combine the teachings of the cited
references in a manner that yields the claimed structure (claim 25) and method (claim 15).
It is true that Kruse and Kaspar provide the basic structure of a core layer with a
neutralizing agent encapsulated by a time release layer and the basic method of dissolving
the components of the solid composition in a particular sequence. But, neither of the
references suggests the addition of CDEC as the outermost layer and a cleaning enzyme
component to the core layer for the purpose of removing protein deposits formed from the
CDEC. We note that Huth and Izumi may suggest the desirability of adding these
components in a contact lens cleaning/disinfecting solution. However, the examiner points
to no basis in any of the references that would lead a person of ordinary skill in the art to
assemble the components in a structure as claimed or use them in the order claimed.
The initial burden of establishing unpatentability rests on the examiner, In re Oetiker,
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