Appeal No. 2003-0443 Page 3
Application No. 09/465,653
[i]t would have been obvious to one of ordinary skill in the art at the
time of the invention to have modified the composition in Arora by
replacing methyl salicylate with turpentine oil, as suggested by
Deckner et al. and Went et al., because of the expectation of
successfully producing a similar analgesic composition with
equivalent effectiveness and skin penetration without adverse
effects.
As we understand the examiner’s rejection, since Deckner and Went
disclose the equivalent function of turpentine, eucalyptus oil and methyl
salicylate2, it would have been prima facie obvious to substitute turpentine for
methyl salicylate in the composition disclosed by Arora. Notwithstanding the
examiner’s arguments, the evidence relied upon by the examiner also leads a
person of ordinary skill in the art to a composition comprising methyl salicylate,
turpentine and alcohol, which is not the claimed invention. While the examiner
suggests that turpentine, eucalyptus oil and methyl salicylate are equivalent in
function, the examiner failed to provide any evidence as to why a person of
ordinary skill in the art would have modified the Arora composition by substituting
turpentine for methyl salicylate, and not for eucalyptus oil.
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.
2 Methyl salicylate is also known as wintergreen oil. See Arora, column 1, line 48.
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