Appeal No. 2004-0340 Page 7
Application No. 09/847,121
examiner’s statement that “[t]he reference should be taken as a whole and all of
its teachings must be considered.” Examiner’s Answer, page 6.
Where we disagree with the examiner is in the conclusion to be drawn
from applying the correct legal standard to the facts of this case. The examiner
seems to believe that combining the components of two separate dietary
supplement compositions into a single composition is such a trivial difference that
the claimed composition would be prima facie obvious even in the absence of a
suggestion to modify the prior art compositions. We disagree.
“[I]dentification in the prior art of each individual part claimed is insufficient
to defeat patentability of the whole claimed invention. Rather, to establish
obviousness based on a combination of the elements disclosed in the prior art,
there must be some motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the applicant.” In re Kotzab,
217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000). “Even when
obviousness is based on a single prior art reference, there must be a showing of
a suggestion or motivation to modify the teachings of that reference.” Id. at 1370,
55 USPQ2d at 1316. No such suggestion is apparent here.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007