Appeal No. 2004-2078 Page 3
Application No. 09/754,509
appellants assert (Brief, page 10), “Ghyczy or Woodle, alone, or in combination,
fail to teach or suggest the claimed invention.” We agree.
As we understand the examiner’s position, it would have been obvious to
a person of ordinary skill in the art at the time the invention was made to add a
lipid-derivatized polymer to the liposomal gel composition of Ghyczy to enhance
the circulation time of Ghyczy’s liposomal gel composition. The examiner,
however, failed to identify any portion of the Ghyczy patent that suggests the use
of the liposomal gel composition in the circulatory system. To the contrary, we
find that Ghyczy is concerned with compositions for topical preparations. See
e.g., Ghyczy, column 1, lines 11-14, emphasis added, “[t]he present invention
relates to an alcoholic, aqueous gel-like phospholipid composition and its use.
The present invention furthermore relates to topical preparations containing it.”
While a person of ordinary skill in the art may possess the requisite knowledge
and ability to modify Ghyczy’s liposomal gel composition to include a circulation
enhancing agent, the modification is not obvious unless the prior art suggested
the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 211 USPQ
1125, 1127 (Fed. Cir. 1984). Here we see no such reason to modify the
references as applied.
To establish a prima facie case of obviousness, there must be more than
the demonstrated existence of all of the components of the claimed subject
matter. There must be some reason, suggestion, or motivation found in the prior
art whereby a person of ordinary skill in the field of the invention would make the
substitutions required. That knowledge cannot come from the applicants’
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