Appeal No. 2003-1736
Application No. 09/123,137
350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992) (Federal Circuit has “decline[d] to extract
from Merck [& Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed.
Cir. 1989)] the rule that... regardless of how broad, a disclosure of a chemical genus
renders obvious any species that happens to fall within it.”). See also In re Deuel, 51
F.3d 1552, 1559, 34 USPQ2d 1210, 1215 (Fed. Cir. 1995). Thus, without more, the
disclosure of the incorporation of enzymes in a hydrogel as set forth in WO 93/17669
does not provide a sufficient reason, suggestion or motivation to incorporate specific
active oxygen inhibitors in a hydrogel.
The burden is on the examiner to set forth a prima facie case of obviousness.
See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996). With
respect to an obviousness rejection based on a combination of references, as the court
has stated, “virtually all [inventions] are combinations of old elements.” Environmental
Designs, Ltd. V. Union Oil Co., 713 693, 698, 218 USPQ 865, 870 (Fed. Cir. 1983); see
also Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1579-80, 219 U.S.P.Q. (BNA) 8,
12 (Fed. Cir. 1983) (“Most, if not all, inventions are combinations and mostly of old
elements.”). Therefore, an examiner may often find every element of a claimed
invention in the prior art. If identification of each claimed element in the prior art were
sufficient to negate patentability, very few patents would ever issue. The United States
Court of Appeals for the Federal Circuit, our reviewing court, however, has stated that
“the best defense against hindsight-based obviousness analysis is the rigorous
application of the requirement for a showing of a teaching or motivation to combine the
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