Appeal No. 2006-0650 Page 6
Application No. 10/007,613
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir .1993). A prima
facie case of obviousness requires evidence that the prior art disclosed or suggested all
of the elements of the claimed invention, and that those skilled in the art would have
been motivated to combine those elements with a reasonable expectation of success.
See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970); In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1443 (Fed. Cir .1991).
Most inventions arise from a combination of old elements that are found in the
prior art. “However, mere identification in the prior art of each element is insufficient to
defeat the patentability of the combined claimed subject matter. . . . Rather, to establish
a prima facie case of obviousness based on a combination of elements disclosed in the
prior art, the Board must articulate the basis on which it concludes that it would have
been obvious to make the claimed invention … In practice, this requires that the Board
‘explain the reasons one of ordinary skill in the art would have been motivated to’” to
combine the elements of the prior art. In re Kahn, 441 F.3d 977, 987, 78 USPQ 1329,
1335 (Fed. Cir. 2006).
In setting forth the motivation to have combined the references, the examiner
apparently read the claims to require prion decontamination to be achieved, and
therefore found it necessary to identify prior art (e.g., WHO2) expressly disclosing
prions. However, the claims are not so limited. There is no verbiage in them that
restricts or requires the system to act on prions. The fact that the articles recited in
certain claims are recited to be “susceptible to contamination by infectious prion protein”
2 “WHO Infection Control Guidelines for Transmissible Spongiform Encephalopathies: Report of a WHO
Consultation,” World Health Organization, (1999).
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