Appeal No. 2006-0333 Page 4
Application No. 09/798,181
Appellants thus admit that each of the compounds of the claimed
composition is present in the prior art, and each was known for use as a
fungicide. In determining obviousness, however, “[w]hen it is necessary to select
elements of various teachings in order to form the claimed invention, we
ascertain whether there is any suggestion or motivation in the prior art to make
the selection made by the applicant. ‘Obviousness can not be established by
combining the teachings of the prior art to produce the claimed invention, absent
some teaching, suggestion or incentive supporting the combination.’” In re
Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991) (citation
omitted); see also In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed.
Cir. 1987) (“Obviousness cannot be established by combining the teachings of
the prior art to produce the claimed invention, absent some teaching suggestion
or incentive supporting the combination.”).
As noted above, compound II of the claimed composition is only one of
191 different named compounds, and its combination with the racemic metalaxyl
is only one of 15,000 combinations. We can find nothing in the Wenderoth
reference that would motivate one of ordinary skill to choose compound 130 from
the 191 listed compounds, and then combine it with metalaxyl to arrive at the
claimed composition. Thus, we conclude that the examiner has failed to set forth
a prima facie case of obviousness, and the rejection is reversed.
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