Appeal No. 2004-0974 Page 8
Application No. 10/117,169
“[T]he Examiner bears the burden of establishing a prima facie case of
obviousness based upon the prior art. ‘[The Examiner] can satisfy this burden
only by showing some objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.’” In re Fritch, 972 F.2d 1260,
1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (citation omitted). An adequate
showing of motivation to combine requires “evidence that ‘a skilled artisan,
confronted with the same problems as the inventor and with no knowledge of the
claimed invention, would select the elements from the cited prior art references
for combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif.
Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1076 (Fed. Cir. 2000).
In this case, some of the references cited by the examiner can properly be
combined and therefore suggest a composition comprising some of the
components of instant claim 5. For example, Zheng discloses that ferulic acid “is
beneficial to sperm viability and motility in both fertile and infertile individuals,”
(abstract); Scott discloses that “selenium supplementation in subfertile men with
low selenium status can improve sperm motility and the chance of successful
conception” (abstract); and Dawson discloses that “[a]scorbic acid
supplementation of heavy smokers in excess of 200 mg/d results in improved
sperm quality” (abstract).
Thus, each of these references suggests a specific active agent for
producing the same physiological result. Therefore, these references can fairly
be said to suggest combining ferulic acid, selenium, and vitamin C to produce a
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