Appeal No. 2001-1265
Application No. 08/612,074
manipulate the basic teachings of Weder with the expectation of obtaining
at least similar results.
We do not find that the examiner has presented sufficient evidence to support a
prima facie case of obviousness. The examiner admits that the ratios of phospholipid
to bile salts taught by Weder 1 are different from the claimed ratios, but deems it
obvious to an artisan to manipulate the basic teachings of Weder 1 with the expectation
of obtaining at least similar results, apparently relying on the general knowledge in the
art to negate patentability of the claimed invention.
Patent examiners, in relying on what they assert to be general knowledge to
negate patentability on the ground of obviousness, must articulate that knowledge and
place it of record, since examiners are presumed to act from the viewpoint of a person
of ordinary skill in the art in finding relevant facts, assessing the significance of prior art,
and making the ultimate determination of the obviousness issue. Failure to do so is not
consistent with either effective administrative procedure or effective judicial review;
examiners cannot rely on conclusory statements when dealing with particular
combinations of prior art and specific claims, but must set forth the rationale on which
they rely. See In re Lee, 277 F.3d 1338, 1343-1344, 61 USPQ2d 1430, 1433-1434
(Fed. Cir. 2002). Thus, it is improper to rely on the Acommon knowledge and common
sense@ of a person of ordinary skill in art to find an invention obvious over a
combination of prior art references, since the factual question of motivation to select
and combine references is material to patentability, and cannot be resolved on
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