Appeal No. 2003-2147
Application No. 09/392,243
the Van Gorp patent, namely scavenging oxygen.” Brief, page 16.
In response, the examiner finds with respect to Oles, that the claims are open
ended and do not exclude the combination of acetic acid and phosphoric acid as a
preservative. While the examiner is correct in his interpretation of the scope of claim
21, what is missing from the examiner's analysis is why one of ordinary skill in the art
would have been motivated to select the specific phosphoric acid and acetic acid
preservative in combination with mucosa tissue. Oles provides that the combination of
acetic acid and phosphoric acid has specific application to low acid food products. See
abstract. The examiner has not established that mucosa tissue would be considered an
equivalent to a low acid food product.
In view of the above, we agree with appellants that the examiner has failed to
establish a prima facie case of obviousness on the prior art evidence before us. “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). 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,
1075 (Fed. Cir. 2000).
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