Appeal No. 2003-0824 Page 4
Application No. 09/713,974
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 cannot agree with the examiner that the cited references
would have suggested the method now claimed. As the examiner noted,
Sampino discloses a shaving lotion comprising a chitosan derivative. The
derivative is obtained from shrimp shells by treating the chitin in the shells with
chitinase, then isolating and purifying the resulting “chitosonium pyrrolidone
carbonxylate.” See column 1, line 65 to column 2, line 9.
As the examiner noted, Sine teaches that soluble chitosan is one of
several known irritation reducing agents that can be used in, e.g., a hand
sanitizing composition. See column 14, lines 55-62; column 2, lines 24-28. The
examiner argued that this teaching would have led those skilled in the art to add
soluble chitosan to the shaving lotion disclosed by Sampino. We disagree.
Sampino teaches that use of the disclosed lotion “mak[es] shaving
effortless, painless, and irritation free.” Abstract (emphasis added). The
examiner has not adequately explained why those skilled in the art would have
been led to add other, known irritation-reducing agents to the disclosed lotion – if
the lotion already makes shaving “irritation-free”, why would the skilled artisan
add another irritation-reducing agent?
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