Appeal No. 2002-0534 Page 6
Application No. 08/551,326
1993). The test of obviousness is “whether the teachings of the prior art, taken
as a whole, would have made obvious the claimed invention.” In re Gorman, 933
F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
“Most if not all inventions arise from a combination of old elements. Thus,
every element of a claimed invention may often be found in the prior art.
However, identification in the prior art of each individual part claimed is
insufficient to defeat patentability of the whole claimed invention. Rather, to
establish obviousness based on a combination of the elements disclosed in the
prior art, there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by the applicant.”
In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000).
An adequate showing of motivation to combine requires “evidence that ‘a skilled
artisan, confronted with the same problems as the inventor and with no
knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem, Inc. v.
Southern Calif. Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed.
Cir. 2000).
In this case, we agree with Appellant that the prior art cited by the
examiner could not have suggested the instantly claimed products and methods
to a person of ordinary skill in the art. First, the examiner relies on Monteleone
for its disclosure that phosphatidylserine blunted exercise-induced cortisol levels.
obviousness, we need not address Appellant’s declaratory evidence relating to secondary
considerations.
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