Appeal No. 2006-0333 Page 3
Application No. 09/798,181
would have been motivated to combine the components of
Wenderoth and Nuninger with a reasonable expectation for
successfully combating Oomycetes infection in plants. This
rejection is based on the well established proposition of patent law
that no invention resides in combining old ingredients of known
properties where the results obtained thereby are no more than the
additive effects of the ingredients, In re Sussman, 1943 C.D. 518.
Id. at 5.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993) (citations omitted). The test of obviousness is “whether the teachings of
the prior art, taken as a whole, would have made obvious the claimed invention.”
In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
As noted by appellants, while Wenderoth discloses compound II of
appellants claimed composition, it is one of 191 listed compounds. See Appeal
Brief, page 8. Moreover, “[n]o characterizing data are given for it and it is not
mentioned in the Use Examples 1 to 3,” and “[n]or does Wenderoth teach the
specific admixture of this compound with the other fungicides listed in columns
15 and 16.” Id. And while Wenderoth while does list racemic metalaxyl, “its
combination with Compound 130 is only one of 15,000 possible combinations.”
Id.
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007