Appeal No. 2002-0663 Page 5
Application No. 09/504,963
We cannot agree with the examiner’s conclusion. 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).
The deodorant sticks of Walters “are made by amending aqueous alcohol
solutions containing the morpholinium ethosulfate with thickening agents such as
sodium stearate and the like. Such formulations may contain perfume,
medications, coloring agents, fungicides, germicides and drying agents, as well
as other preservatives.” Walters, column 2, lines 26-31. Walters, however, does
not identify which medications, fungicides or germicides can be included in the
morpholinium ethosulfate composition disclosed. In contrast to Walters’
morpholinium ethosulfate deodorant composition, Kuhns teaches an alkali metal
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