Appeal No. 1998-1720
Application No. 08/384,239
We disagree. As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000):
Most if not all inventions arise from a combination of old elements. [] Thus,
every element of a claimed invention may often be found in the prior art. []
However, identification in the prior art of each individual part claimed is
insufficient to defeat patentability of the whole claimed invention. [] Rather, to
establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by the
applicant. [citations omitted]
In other words, “[o]ne cannot use hindsight reconstruction to pick and choose
among isolated disclosures in the prior art to deprecate the claimed invention.” In re Fine,
837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988). “[T]here still must be
evidence that ‘a skilled artisan, . . . 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 California Edison, 227 F.3d 1361, 1375, 56
USPQ2d 1065, 1075-76 (Fed. Cir. 2000). In our view, that evidence is lacking in the
examiner’s rejection and in the art cited.
Thomas’ focus is on protecting proteases from digestive acids by complexing them
with tannin; Geyer releases and activates the enzyme from the tannin-protease complex
with surfactants (which are expressly excluded from the claimed composition); while Töpfer
releases active enzyme with acetone. Green, Borello and Tang, on the other hand, teach
2(...continued)
pages are numbered 1-3, the fourth page is unnumbered, and the fifth, sixth and seventh
pages are numbered 3-5.
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