Appeal No. 2001-1489 Page 13
Application No. 09/177,695
… it is the position of the examiner that one of ordinary skill in the art would use
two different colors so that it is easy and convenient for the consumers. Selection of
two different colors is within the gambit [sic: ambit?] of the skilled chemist.
If this is repeated during subsequent prosecution, it should be supported with factual
evidence.
[The] factual question of motivation is material to patentability, and [can] not be
resolved on subjective belief and unknown authority. It is improper, in determining
whether a person of ordinary skill would have been led to this combination of
references, simply to “[use] that which the inventor taught against its teacher.” W.L.
Gore v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983).
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
As to the pump mechanism as described in claim 7, we note that examiner
(Examiner’s Answer, p. 6) has argued that this is shown by the Dutch Patent. While this
may be the case, the question is not whether any individual element of the claimed
invention is taught in the prior art. The question is whether the prior art would suggest
the claimed invention as a whole. Upon subsequent prosecution, in making the
necessary analysis, examiner should be mindful that the mere fact that the prior art
could be modified to obtain the claimed process does not make the modification
obvious unless the prior art suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). “To establish a prima facie
case of obviousness based on a combination of references, there must be a teaching,
suggestion or motivation in the prior art to make the specific combination that was
made by the applicant.” In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637
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