Interference No. 105,174 Paper 86
Henkel v. P&G Page 14
dissolution test method, would not have been obvious to a person of ordinary skill in the
art when the scope and content of the prior art and the level of ordinary skill in the art
are considered. It is P&G’s burden to provide some evidentiary basis to prove non-
obviousness.
We do not mean to imply that P&G in attempting to show non-obviousness must
prove that no prior art exists that, when combined with the “prior art” Henkel claims,
would render the subject matter of its claims obvious. The proofs may, for example, be
in the form of testimony of a person skilled in the relevant art, e.g., an inventor, that he
is unaware of any prior art and/or other reasons that would teach or suggest modifying
the subject matter of the “prior art” claims to account for the differences. “Other
reasons” might include testimony that any modifications necessary to the “prior art” do
not reflect conventional or routine practices or other matters well known in the art,
expert testimony relating to lack of knowledge of information in the prior art which would
supply motivation to modify the “prior art” claim(s), or that the claimed subject matter
demonstrates unexpected results or one of the other secondary considerations of non-
obviousness when compared to the “prior art” claim(s).
Here, P&G has focused solely on a comparison of the parties’ claims and what
the claims alone might teach or suggest without any consideration of the level of
ordinary skill in the art and the scope and content of the prior art. In short, P&G has
failed to provide an evidentiary basis to prove non-obviousness.
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007