Appeal No. 2001-2271 Page 5
Application No. 08/971,839
combination with Heat Systems Ultrasonics, “establishes an implication that the water
temperature of 20°C referred to in [Zohar] is maintained constant during
ultrasonification” (id., page 4).
On this particular point, we agree with appellants. We see no basis for the
assertion that a constant temperature was maintained during Zohar’s ten to fifteen
minute ultrasound treatment. Nevertheless, the claims were rejected as unpatentable
over the combination of Zohar and Heat Systems Ultrasonics, and “[t]he test for
obviousness is what the combined teachings of the references would have suggested to
one of ordinary skill in the art.” In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991). As the examiner points out, Heat Systems Ultrasonics teaches that
“temperature control during ultrasonication is necessary because of the inescapable
heating that accompanies ultrasonication” (Answer, page 11), and also describes
exactly how to maintain a desired temperature. In our view, these references, taken
together, provide evidence that those of skill in the art would have been led to combine
their disclosures, and would have had a reasonable expectation of success in doing so.
See In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). Therefore, we find no error in the examiner’s determination that the combined
teachings of Zohar and Heat Systems Ultrasonics are sufficient to establish that “it
would have been prima facie obvious to one of ordinary skill in the art . . . to maintain
the temperature constant at a temperature . . . which is suitable for the organism being
treated during [ ] ultrasonic . . . infus[ion of] compounds into aquatic organisms” (id.), as
required by claim 1 on appeal.
On this record, we find no error in the examiner’s determination that claim 1 is
unpatentable under 35 U.S.C. § 103. As previously indicated, claims 2, 7, 10 and 11
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