Appeal No. 2003-1012 Page 4
Application No. 09/340,111
Appellants argue that:
The fact that a buffer could be made having an acidic pH does not
establish that the oral composition of Ebetino has a pH of 6 or less
as claimed. Ebetino does not disclose or suggest a pH for its oral
composition and the Action does not cite a passage of Ebetino to
support the proposition.
Appeal Brief, page 9. We agree.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). Obviousness is determined in view of the sum of all of the relevant
teachings in the art, not isolated teachings in the art. See In re Kuderna, 426
F.2d 385, 389, 165 USPQ 575, 578 (CCPA 1970); see also In re Shuman, 361
F.2d 1008, 1012, 150 USPQ 54, 57 (CCPA 1966). In assessing the teachings of
the prior art references, the examiner should also consider those disclosures that
may teach away from the invention. See In re Geisler, 116 F.3d 1465, 1469, 43
USPQ2d 1362, 1365 (Fed. Cir. 1997).
As noted by the examiner, Ebetino does teach that particularly preferred
buffer systems include citric and acetic acids. See Ebetino, col. 20, lines 53-60.
But as pointed out by appellants, in the examples drawn to dental compositions,
i.e., Examples 22 and 23, the compositions are adjusted to a pH of 7. See id. at
cols. 43-44. Thus, contrary to the position of the examiner, Ebetino does not
disclose the limitation of an acidic solution, and in fact, teaches away from the
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