Appeal No. 2003-0944 Page 4
Application No. 09/577,955
is used for the identical purpose taught by the prior art.”
Nor are we persuaded by appellant’s argument that “there is no motivation [in the
prior art] to make this combination for the purpose of preventing or repairing split ends”
(Brief, page 13). Prima facie obviousness does not require that the prior art references
suggest combining their disclosures for the same reason that appellants combined
them. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en
banc) (“it is not necessary in order to establish a prima facie case of obviousness . . .
that there be a suggestion in or expectation from the prior art that the claimed
compound or composition will have the same or a similar utility as one newly discovered
by applicant).”
On the record before us, we find no error in the examiner’s determination that
Carr’s teachings are sufficient to establish a prima facie case of obviousness within the
meaning of 35 U.S.C. § 103 as to the subject matter of claim 16, which requires the
combination of isoleucine and lysine. As to the subject matter of claim 8, appellant
argues that “[t]here is no suggestion . . . to select one amino acid with an aliphatic side
chain and one amino acid with a basic side chain” (Brief, page 12). Nevertheless, claim
16 necessarily requires a combination of an amino acid with an aliphatic side chain
(isoleucine) and an amino acid with a basic side chain (lysine), thus, it follows that
Carr’s teachings are sufficient to establish a prima facie case of obviousness as to the
subject matter of claim 8 as well. As discussed above, claims 9-14 stand or fall with
claim 8.
Accordingly, the examiner’s rejection of claims 8 through 14 and 16 under 35
U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
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