Appeal No. 2004-1188 Page 5
Application No. 09/940,784
in the prior art. … However, identification 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 other words, “there still must be evidence that >a skilled artisan, ... 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 California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000). At best, the statement of the rejection establishes that
individual parts of the claimed invention were known in the prior art. In this
regard, we agree with appellants (Reply Brief, page 2), “[t]he rejection appears to
be based simply on a finding that all of the appellants’ required ingredients are
known in the art. However, there is no suggestion in the applied documents to
make any combination of ingredients that will fully meet the limitations of the
rejected claims.”
For the foregoing reasons, we reverse the rejection of claims 15-17 and
21-28 under 35 U.S.C. § 103 as being unpatentable over the combination of
Shimizu, Gilbert and Parnell.
The combination of Shimizu, Gilbert and Parnell, further in view of Rybacki:
The examiner relies on Shimizu, Gilbert and Parnell as set forth above.
According to the examiner (Answer, page 4), “[t]he references are silent as to the
specific molecular weight of PVP being claimed.” To make up for this deficiency,
the examiner relies on Rybacki. According to the examiner (Answer, page 5),
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