Appeal No. 2003-0564 Page 5
Application No. 08/964,498
teaching of the desirability of making the specific combination that was made by
the applicant.”).
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 Appellants that the examiner has not shown
that the claimed method would have been obvious based on the cited references.
Howes discloses heterocyclic polymers comprising quaternary ammonium units
that fall within the formulas recited in the instant claims. Howes, however, does
not disclose that the polymers are useful for treating hyperphosphatemia or that
they have properties (e.g., phosphate binding) that would suggested such a use.
Instead, Howes discloses that the polymers have antimicrobial activity and are
useful for sterilization of contact lenses and for treatment of bacterial infection of
the skin. See the abstract.
Holmes-Farley teaches treatment of hyperphosphatemia using phosphate-
binding polymers comprising tertiary or quaternary ammonium units. The
polymers disclosed by Holmes-Farley, however, are made up of acyclic subunits
and therefore do not fall within the formulas recited in the instant claims. See
pages 3-7. Nor does Holmes-Farley suggest that all polymers comprising tertiary
or quaternary ammonium units would work in the disclosed method.
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