Appeal No. 2003-0816
Application No. 09/693,254
led a person of ordinary skill in the art to select the references and combine them in
the way that would produce the claimed invention. See, e.g., Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072,
30 USPQ2d 1377, 1379 (Fed. Cir. 1994) (When the patent invention is made by
combining known components to achieve a new system, the prior art must provide a
suggestion, or motivation to make such a combination.); Northern Telecom v.
Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d 1321, 1323 (Fed. Cir. 1990) (It is
insufficient that the prior art disclosed the components of the patented device, either
separately or used in other combinations; there must be some teaching, suggestion,
or incentive to make the combination made by the inventor.); Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1044, 1051, 5 USPQ 1434, 1438 (Fed. Cir.
1988).
We do not agree with the Examiner’s obviousness determination. Conte
describes a composition that contains an active substance in a matrix core. The
matrix is characterized as swelling on contact with aqueous liquids. (Col. 2, ll. 41-
44). The composition also contains a support for the matrix that partly covers the
matrix core. (Col. 1, ll. 65-66). The support is also characterized by the property of
remaining intact until the complete release of the active substance in the matrix
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