Appeal No. 2003-1736
Application No. 09/123,137
types of enzymes.” Reply Brief, page 4.
In the present case, the examiner has failed to indicate the specific under-
standing or principle within the knowledge of a skilled artisan, explicit or implicit, that
would have motivated one with no knowledge of appellants' invention to make the
combination in the manner claimed. In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d
1453, 1457 (Fed. Cir. 1998). In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000).
What is missing from the examiner’s analysis is a sufficient reason, suggestion
or motivation to combine the cited references. More particularly, the examiner has not
indicated why one of ordinary skill in the art would have been motivated to select or
include active oxygen inhibitors, such as SOD, in the prior art hydrogels. While it is
clear from the record that both SOD and hydrogels were known in the art, we do not
find the examiner has established with proper evidence, the motivation to incorporate
an active oxygen inhibitor in a hydrogel.
We do not agree with the examiner that the mention of the incorporation of
enzymes in a hydrogel (WO 93/17669) would have suggested the incorporation of SOD
in a hydrogel. It is well settled that the fact that a claimed species or subgenus is
encompassed by a prior art genus is not sufficient by itself to establish a prima facie
case of obviousness. In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir.
1994) (“The fact that a claimed compound may be encompassed by a disclosed generic
formula does not by itself render that compound obvious.”); In re Jones, 958 F.2d 347,
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007