Appeal No. 1999-0342
Application 08/184,813
Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76 (Fed. Cir. 2000). At best, the
statement of the rejection establishes that individual parts of the claimed invention were
known in the prior art.
We have no doubt that the prior art could be modified in a manner consistent with
appellant’s specification and claims. The mere fact that the prior art could be so modified,
however, would not have made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
In the present case the examiner has not provided an evidentiary basis for
concluding that the amino acids described in Alsop function, in combination with
maltodextrin, as an osmotic agent. All of the independent claims of the application require
approximately 2-6% w/v of maltodextrins having a specific weight average molecular
weight and 0.25-2% w/v of amino acids. In our view the examiner has failed to present
evidence that one of ordinary skill in the art, upon reading the disclosure of Alsop, would be
motivated to use the amino acids disclosed in Alsop which function as “electrolytes” (in no
specific amounts), as part of a two component osmotic agent having the specifically
claimed amounts. The amount of maltodextrin required by the claims is significant,
according to appellants' specification, because the addition of amino acids to
maltodextrins resulted in a 46% reduction in the quantity of glucose polymers required to
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