Appeal No. 2001-0697 Page 5
Application No. 09/125,033
Appellants argue that
[t]he Examiner, by equating ammonium lactate with sodium lactate
and calcium lactate, substitutes the carboxylate salts of strong
bases for the ammonium lactate (a carboxylate salt of a weak base)
in Walkup to arrive at her conclusion of obviousness. This is
improper because Walkup uses a catalytic amount of a weak acid
with a carboxylate salt of a weak base. It is contrary to well known
scientific principles to equate a weak acid with a strong acid and
assert that each would react similarly with a carboxylate salt of a
strong base.
Appeal Brief, page 4. Appellants also argue that Walkup teaches away from
substituting a sodium - or calcium-containing base for ammonia because
Walkup’s process “is driven to completion by liberation of ammonia . . . [whereas]
neither sodium nor calcium can be liberated as gases, like ammonia.” Reply
Brief, page 2.
“The PTO has the burden under section 103 to establish a prima facie
case of obviousness. It can satisfy this burden only by showing some objective
teaching in the prior art or that knowledge generally available to one of ordinary
skill in the art would lead that individual to combine the relevant teachings of the
references.” In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988) (citations omitted). “There must be some reason, suggestion, or
motivation found in the prior art whereby a person of ordinary skill in the field of
the invention would make the combination.” In re Oetiker, 977 F.2d 1443, 1447,
24 USPQ2d 1443, 1446 (Fed. Cir. 1992). 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
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