Appeal No. 2001-1675 Page 3
Application No. 08/442,077
DISCUSSION
According to the examiner (Answer, page 4), Tenzel discloses a method
of producing liposomes of uniform size. The examiner finds (id.), however, that
Tenzel does not recognize the relationship between the size of the liposome and
the water: solvent ratio. Therefore, the examiner relies (id.) on Leigh to teach
“that the amount of water which is responsible for the hydration influences the
sizes of liposomes….”
Prima facie obviousness based on a combination of references requires
that the prior art provide “a reason, suggestion, or motivation to lead an inventor
to combine those references.” Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available, however,
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
It is our opinion, on this record, that the examiner improperly relied on
appellant’s specification to obtain the suggestion to combine Tenzel with Leigh.
In this regard, the examiner finds (Answer, bridging sentence, pages 4-5), taking
Tenzel and Leigh “together, it would [have] be[en] obvious to an artisan that the
liposomes produced by [the] instant process will have specific uniform sizes for a
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