Appeal No. 2004-0339 Page 4 Application No. 09/462,678 (id., page 6) and “it would have been obvious . . . to add [the] flavonoids of Vester [to] the nutritional composition of [Henningfield], with an expectation to provide a strong antioxidant activity in plasma and also provide protection to the other antioxidant of [Henningfield,] i.e., vitamin E from being oxidized” (id., page 4). Appellants argue that Henningfield “does not even mention the oxidative stability of vitamin E” (Brief, page 5), and, in any case, “the technical fields of [Henningfield] and Vester are distinct and unrelated” (id.), as one “relates to a nutritional product for trauma and surgery patients” while the other “describes a nutritional supplement specifically designed for improving cardiovascular health” (id.). Appellants’ points are well taken. We see nothing in Henningfield that suggests a recognition that oxidation of vitamin E might interfere with the efficacy of the nutritional product. Moreover, while Henningfield’s and Vester’s compositions are both nutritional in the sense that they are ingested and metabolized, one is designed to serve as a food substitute, while the other is merely a food supplement. In our view, the examiner has unduly focused on the very limited common ground between Henningfield and Vester (i.e., both describe compositions containing vitamin E), while completely ignoring their substantial differences, and we agree with appellants that “one of ordinary skill in the art would lack the motivation to combine [their] teachings (id., pages 4-5). As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citations omitted): A critical step in analyzing the patentability of claims pursuant to section 103(a) is casting the mind back to the time of invention, to consider the thinking of one of ordinary skill in the art, guided only by the prior art references and the then-accepted wisdom in the field. [ ] Close adherence to this methodology is especially important in cases where the very ease with which the invention can be understood may prompt one “to fall victimPage: Previous 1 2 3 4 5 6 7 NextLast modified: November 3, 2007