Appeal No. 2001-1242
Application No. 08/530,650
Pharm. Corp., 225 F.3d 1349, 1356, 55 USPQ2d 1927, 1931 (Fed. Cir. 2000); B.F.
Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318
(Fed. Cir. 1996). We agree with the appellants that the examiner has failed to provide
necessary motivation to modify the disclosure of Buchalter to arrive at the claimed
invention. Instead, in our opinion the examiner has picked and chosen from the individual
components listed within Buchalter to arrive at the claimed lotion composition for treating
tissue paper. This, however, is impermissible within the framework of section 103. In re
Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965); see also In re Mercier,
515 F.2d 1161, 1165-66, 185 USPQ 774, 778 (CCPA 1975).
We also do not find that the secondary references cited, Dake, Lavash or Ampulski
overcome the deficiencies of Buchalter, or that the examiner has provided sufficient
reason, suggestion or motivation for modification of Buchalter in view of the disclosures of
Dake and Lavash, in a manner which would have rendered obvious the claimed invention.
The examiner, in essence argues that the motivation for combination of the
references lies in the fact that all compositions are generally for the treatment of toilet
tissue and that it is within the skill of the ordinary artisan to manipulate the amounts of the
components of Buchalter to obtain the desired fluid nature of the composition to obtain the
best possible results. Answer, pages 6 and 8. While the motivation to combine
references does not have to be identical to patent owner’s to establish obviousness, In re
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996), a reason,
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