Appeal No. 2002-0439
Application No. 09/391,384
We agree with appellants that the examiner has not provided an indication of
sufficient motivation to combine the cited references to support a prima facie case of
obviousness. To begin, two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless of the
problem addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d
1058, 1060 (Fed. Cir. 1992). See also In re Deminski, 796 F.2d 436, 442, 230 USPQ
313, 315 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174
(CCPA 1979). In our view, the examiner has not properly established that Takahashi,
dealing with wastewater treatment is analogous art to the claimed process for the
preparation of creatine or creatine monohydrate.
Moreover, it is well-established that the conclusion that the claimed subject
matter is prima facie obvious must be supported by a preponderance of evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988); In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). As set forth in In re Kotzab, 217 F.3d
1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000):
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007