Appeal No. 2001-1242
Application No. 08/530,650
suggestion or motivation for modification of Buchalter by those of ordinary skill in the art at
the time of the invention should be articulated by the examiner. For example, the
appellants urge that the presence of an immobilizing agent provides ?lotion compositions
that do not exhibit undesired migration into paper-based substrates to which they are
applied.” Brief, page 3. Further, appellants state that the specifically claimed hydrophilic
surfactants provide for a highly wettable paper product which makes substrates treated
with the composition, especially suitable for use as toilet tissue. Id. The examiner does
not indicate that either Buchalter or the secondary references suggest such a motivation
for modification of the disclosure of Buchalter or explain what other specific understanding
or technological principle within the knowledge of one of ordinary skill in the art would have
suggested the claimed surfactant combination or other modification of Buchalter.
Identification in the prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. Rather, to establish obviousness based on a
combination of the elements disclosed in the prior art, there must be some motivation,
suggestion or teaching of the desirability of making the specific combination that was
made by the applicant.
In addition, the Federal Circuit has stated that "[the] mere fact that the prior art may
be modified in the manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the modification." In re Fritch, 972
F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
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