Appeal No. 2006-0762 Page 3
Application No. 09/982,113
Ulukaya is relied upon for teaching “the relationship between 4
hydroxyphenyl retinamide [4-HR] and cancer.” Id. The reference is also cited for
teaching that 4-HR has fewer side effects when compared to naturally occurring
retinoids, and that 4-HR appears to induce apoptosis via a different mechanism
than the classical retinoids. See id.
The examiner concludes:
The use of 4-hydroxyphenyl retinamide as the specific
retinoid in the teachings of Mehta would have been obvious to one
of ordinary skill in the art since Mehta teaches the use of any
retinoid and Ulukaya teaches that this retinoid has fewer side
effects compared to naturally occurring retinoids and induces
apoptosis via different pathway from classical retinoids. . . . The
criticality of the ratios and the amounts of water in the added claims
is not readily apparent to the examiner in the absence of showing of
unexpected results.
Id. at 4.
“[T]he Examiner bears the burden of establishing a prima facie case of
obviousness based upon the prior art. ‘[The Examiner] can satisfy this burden
only by showing some objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.’” In re Fritch, 972 F.2d 1260,
1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (citation omitted). An adequate
showing of motivation to combine requires “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
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