Appeal No. 2003-0338 Page 3
Application No. 08/486,451
ordinary skill in the art to add the stabilizers shown by Prestrelski [ ]
as well as add the non-ionic surfactants for their function as surface
adsorption inhibitors since the reference envisions the formulation
in a kit which would necessarily include vials or other vessals to
contain the TPO formulation.
Paper No. 9, pages 2-3 (citations omitted).
Appellants argue that the rejection is based on improper hindsight
reconstruction. See Appeal Brief, page 18. We agree.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
With respect to an obviousness rejection based on a combination of
references, as the court has stated, “virtually all [inventions] are combinations of
old elements.” Environmental Designs, Ltd. V. Union Oil Co., 713 693, 698, 218
USPQ 865, 870 (Fed. Cir. 1983); see also Richdel, Inc. v. Sunspool Corp., 714
F.2d 1573, 1579-80, 219 U.S.P.Q. (BNA) 8, 12 (Fed. Cir. 1983) (“Most, if not all,
inventions are combinations and mostly of old elements.”). Therefore, an
examiner may often find every element of a claimed invention in the prior art. If
identification of each claimed element in the prior art were sufficient to negate
patentability, very few patents would ever issue. The United States Court of
Appeals for the Federal Circuit, our reviewing court, however, has stated that
“the best defense against hindsight-based obviousness analysis is the rigorous
application of the requirement for a showing of a teaching or motivation to
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