Appeal No. 2001-1779
Application No. 09/398,898
determined. Such secondary considerations as commercial success, long
felt but unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject matter
sought to be patented. As indicia of obviousness or nonobviousness,
these inquiries may have relevancy. (Citation omitted.)
“[T]o 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 re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000), citing In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed.
Cir. 1998) and In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). One cannot establish motivation for combining references through
unsupported conclusory statements. In re Lee, 277 F.3d 1338, 1343, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002).
From the outset, the examiner’s rationale for holding claim 2 obvious over
the cited references is unclear. The examiner states initially that “WO ‘069 and
US ‘926 teach all of the limitations of the claim.” Examiner’s Answer, page 4. In
view of this statement, it is unclear what the examiner considers to be the
differences between the claim and the prior art, and how the prior art should be
modified so as to meet the limitations present in the claim, as required by John
Deere, supra.
While the examiner asserts that “[i]t is within the skill of the art to
determine the amount of active agent needed to achieve a beneficial and/or
therapeutic effect” (Examiner’s Answer, page 4), the examiner does not provide
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