Appeal No. 2001-1241 Page 5
Application No. 09/101,234
et al[.], for efficient polymerization, to obtain desired flow properties of the
composition and at the same time stabilize the composition.” Id., page 4.
Appellants acknowledge that “Schade teaches . . . cross-linked
copolymers of mono-ethylenically unsaturated carboxylic acids of the instant
inventions [sic] as thickeners or dispersants or stabilizers in pharmaceutical and
cosmetic preparations.” Appeal Brief, page 6. Appellants argue, however, that
Schade and Shukla do not support a prima facie case of obviousness, because
there is no evidence found in Shukla or Schade, or any other
known references, as to why one of skill in the art would be
motivated to modify Shukla’s composition to become what
applicants have claimed, especially with regard to the polymer
component which is obtained by free-radical-initiated
copolymerization of the monomer mixture. . . . Without evidence
found in the cited art itself, there would have been no motivation for
the skilled artisan to modify what is shown in the art in order to
arrive at the instant invention as claimed.
Id., pages 6-7.
We disagree with Appellants’ assertion that the evidence of motivation to
combine must come from the cited references themselves. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(“[E]vidence of a suggestion, teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge of one of ordinary skill in the
art, or, in some cases, from the nature of the problem to be solved.”). However,
we agree that the examiner has not made out a prima facie case of obviousness.
The examiner bears the burden of establishing a prima facie case under
35 U.S.C. § 103. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). The examiner “can satisfy this burden only by showing some
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