Appeal No. 2003-0824 Page 6
Application No. 09/713,974
In addition, the examiner has provided no evidence or reasoning to show
that those of skill in the art would have been motivated to select chitosan,
specifically, from among the irritation-reducing agents set out in Sine. The
examiner has not shown, for example, that chitosan was known to be an
especially good irritation reducer or that its properties would have been expected
to complement Sampino’s “chitosonium pyrrolidone carbonxylate”. In fact, we
note that Sampino’s “chitosonium pyrrolidone carbonxylate” appears to be a salt
or derivative of chitosan; thus, if anything, it would appear that those skilled in the
art would expect chitosan and “chitosonium pyrrolidone carbonxylate” to have
similar properties. Thus, it would not appear that those skilled in the art would
have expected any unusually beneficial effect to result from the combination.1
“[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.” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). The
examiner has not provided adequate evidence to show that persons skilled in the
art would have been led to combine the teachings of Sampino and Sine.
1 We are not saying that a conclusion of obviousness requires that those skilled in the art would
have expected the combination to be unusually beneficial, only that such an expectation, if shown
by the evidence, could provide a basis for combining the references. See Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481,
488 (Fed. Cir. 1984) (“[T]he question is whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making the combination.”).
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