Appeal No. 2006-0442 Page 5
Application No. 10/123,142
combined in billions of different ways, and the prior art would not have led those skilled in
the art to combinations containing hydroxypropyl cellulose and a modified starch.
Appeal Brief, page 7.
The examiner bears the burden of showing that a claimed invention would have
been obvious to a person of ordinary skill in the art. In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). As part of the prima facie case, the examiner
must establish, by evidence or sound scientific reasoning, “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, 1076 (Fed. Cir. 2000). See also In re Kahn, 441 F. 3d 977,
988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006) (“[T]he ‘motivation-suggestion-teaching’
test asks not merely what the references disclose, but whether a person of ordinary skill
in the art, possessed with the understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the inventor, would have been led to make
the combination recited in the claims.”).
In this case, we agree with Appellants that the examiner has not shown that the
cited references would have suggested the instantly claimed composition. The examiner
has established that Zerbe teaches a composition lacking only the modified starch
recited in claim 1, and that Leung teaches that hydroxypropylated high amylose starch (a
modified starch) was a known film-forming agent used in edible films.
However, the examiner has not provided any evidence or reasoning that would
have led those skilled in the art to add the modified starch taught by Leung to the film
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