Appeal No. 1998-2536 Page 5
Application No. 08/710,690
To remedy the deficiencies in Janda, the Examiner asserts it would have been
obvious to “substitute the unsaturated fatty acids from marine oil for the oils of the
reference because these oils are seen to be nutrient type oils.” (Answer, p. 4.) The
Examiner also urges that the selection of a particular oil is an “obvious matter of
choice”. (Answer, p. 5.) The Examiner has not directed us to the portion of Janda
which discloses marine oils are “nutrient type oils.” Further, the Examiner has not
identified “marine oils” as highly unsaturated fatty acids having at least 18 carbon
atoms and having at least 3 double bonds.
In order for a prima facie case of obviousness to be established, the teachings
from the prior art itself must appear to have suggested the claimed subject matter to
one of ordinary skill in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ
143, 147 (CCPA 1976). The Examiner must explain why the prior art would have
suggested to one of ordinary skill in the art the desirability of the modification. See
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
The Examiner has not provided the required explanation as to how the applied
prior art itself would have fairly suggested, to one of ordinary skill in the art, to form
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