Appeal No. 2004-1188 Page 4
Application No. 09/940,784
that the combination of two or more polyvinylpyrrolidone polymers having
different average molecular weights, as required by the rejected claims, would be
useful in a nasal spray composition, there simply can be no prima facie case for
obviousness….” We agree.
In this regard, we note the examiner’s statement (Answer, page 5),
“although Shimizu does not teach [a] mixture of PVP having different average
molecular weights, the examples of Shimizu suggest using polyvinylpyrrolidone
having different average molecular weights for [a] similar purpose desired by the
appellant….” While Shimizu teach the use of PVP having different average
molecular weights, Shimizu do not teach or suggest the use of PVPs having
different average molecular weights in the same composition. Neither Gilbert nor
Parnell make up for the deficiency in Shimizu. Accordingly, we disagree with the
examiner’s conclusion (id.), “it would have been obvious for one of ordinary skill
in the art to, by routine experimentation[,] combine the PVP polymers in the
examples to obtain the claimed invention.”
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 victim to the insidious
effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.”
…
Most if not all inventions arise from a combination of old elements.
… Thus, every element of a claimed invention may often be found
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