Appeal No. 2000-1909 Page 4
Application No. 08/790,528
combinations of old elements.” Environmental Designs, Ltd. V. Union Oil Co.,
713 693, 698, 218 USPQ 865, 870 (Fed. Cir. 1983); see also Richdel, Inc. v.
Sunspool Corp., 714 F.2d 1573, 1579-80, 219 U.S.P.Q. (BNA) 8, 12 (Fed. Cir.
1983) (“Most, if not all, inventions are combinations and mostly of old
elements.”). Therefore, an examiner may often find every element of a claimed
invention in the prior art. If identification of each claimed element in the prior art
were sufficient to negate patentability, very few patents would ever issue. The
United States Court of Appeals for the Federal Circuit, our reviewing court,
however, has stated that “the best defense against hindsight-based obviousness
analysis is the rigorous application of the requirement for a showing of a teaching
or motivation to combine the prior art references.” Ecolochem, Inc. v. Southern
California Edison Co., 227 F.3d 1361, 1371, 56 USPQ2d 1065, 1073 (Fed. Cir.
2000).
In this situation, the rejection fails to show that one of ordinary skill in the
art would have been motivated to incorporate an acid neutralizing agent, an anti-
gas agent, and an acid production inhibitor in a chewing gum base. Singer
teaches the incorporation of an acid-production inhibitor, i.e., an H-2 receptor
antagonist, in a chewing gum to deliver the antagonist to the oral cavity for the
treatment of gingivitis. Singer, however, provides no motivation to add the acid
neutralizing base and an anti-gas agent to the chewing gum matrix because
Singer only teaches the use of the chewing gum to deliver an active agent to the
oral cavity for the treatment of gingivitis, and does not teach or suggest its use
for the delivery of active agents for the treatment of gastroesophageal reflux
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