Appeal No. 2002-1629 Page 6
Application No. 08/863,121
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). To support a case of prima facie obviousness, “particular findings
must be made as to the reason the skilled artisan, with no knowledge of the
claimed invention, would have selected these components for combination in the
manner claimed.” In re Kotzab, 217 F.3d 1365, 1371, 55 USPQ2d 1313, 1317
(Fed. Cir. 2000).
Here, we conclude that the examiner has not adequately shown that a
person skilled in the art, with no knowledge of the present disclosure, would have
been motivated to substitute hydroxylamine for the other oxidizing agents known
in the art. It is true that Bunn teaches that both hydroxylamine and nitrites
oxidize hemoglobin. However, Bunn also teaches a variety of other agents that
have the same effect. See Table 16-3, page 642: Bunn discloses that some
agents directly oxidize hemoglobin (ferricyanide, copper, hydrogen peroxide,
hydroxylamine, chromate, chlorate, nitrogen trifluoride, tetranitromethane,
quinones, and dyes); some agents oxidize hemoglobin via interaction with
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