Appeal No. 2001-0599 Page 7
Application No. 08/555,198
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). Prima facie obviousness requires, among other things, evidence of “a
reason, suggestion, or motivation to lead an inventor to combine [the cited]
references.” Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). An adequate showing of
motivation to combine requires “evidence that ‘a skilled artisan, confronted with
the same problems as the inventor and 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 Calif. Edison
Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed. Cir. 2000) (quoting
In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998)).
We agree with Appellant that the examiner has not made out a prima facie
case of obviousness. We find ourselves in agreement with the following
argument succinctly stated in the Appeal Brief:
The prior art cited by Examiner consists of: (1) an antimicrobial
“coating” that is in reality a diffusion layer covering porous cloth or
fibrous mat soaked with antimicrobials; (2) a multi-ply glove with
suspended liquid antimicrobials between the plies; and (3) a
method for treating surfaces to make them hydrophilic. These
references do not show the “antiseptic composition layer” that is the
crux of the present invention. Nor can the cited references be
combined to teach the present invention. Kitrilakis et al. and
Dangmann [sic] et al. are inapposite in that one slowly dispenses
antimicrobial agents through a diffusion layer while the other
contains its antimicrobial agents between impenetrable plies of a
glove until a ply is punctured. Applying the hydrophilic surface
treatment taught by Goldberg et al. to the “coating” taught by
Kitrilakis et al. would result in a nonfunctional device. Combining
composition.” Examiner’s Answer, page 5. For the reasons discussed infra, we consider this
characterization to overstate the relevance of Kitrilakis to the instant claims.
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