Appeal No. 2005-0406 Page 4
Application No. 10/187,616
understand it, the problem with the examiner’s logic is that there is no teaching
on this record that the composition of Forusz and folic acid are useful for the
same purpose. To the contrary, the evidence of record demonstrates that the
composition of Forusz provides nutrients to support adequate bone density and a
healthy skeletal system, while folic acid is for energy production. While Balch
includes folic acid in a list of nutrient supplements implied to be used by a person
suffering from Paget’s disease of bone, there is no suggestion in Balch, or any
other reference of record, that folic acid is useful for anything other than energy
production. Therefore, contrary to the examiner’s assertion, it is our opinion that
a skilled artisan would not have recognized that folic acid as taught by Balch,
would be useful in the composition disclosed by Forusz.
As set forth in Ecolochem Inc. v. Southern California Edison, 227, F.3d
1361, 1375, 56 USPQ2d 1065, 1075 (CAFC 2000) the:
“[S]uggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the
problem to be solved.” … However, there still must be 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.” … “[A] rejection cannot be
predicated on the mere identification … of individual components of
claimed limitations. Rather particular findings must be made as to
the reason the skilled artisan, with no knowledge of the claimed
invention, would have selected these components for combination
in the manner claimed.”…. [Citations omitted].
combination, for the same purpose, of one additive explicitly disclosed in the prior art and another
suggested by the prior art would at least prima facie obvious”); In re Crockett, 279 F.2d 274, 276-
77, 126 USPQ 186, 188 (CCPA 1960) (“the idea of combining them [magnesium oxide and
calcium carbide] would flow logically from the teaching of the prior art and therefore that a claim
to their joint use is not patentable”).
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