Appeal No. 2006-1021 Page 11
Application No. 09/851,882
In response, appellants begin by pointing out that the Product Insert
teaches a composition comprising Q10 and Vitamin E, while Press Release
teaches a composition comprising Q10 and Vitamin A. Brief, pages 9-10.
Accordingly appellants assert that the dates taught by the Press Release do not
pertain to the composition taught by the Product Insert. Brief, page 10. The
examiner fails to respond to this point of fact.
Appellants then highlight that none of Produce Insert, Press Release,
Business Wire, or Bertelli teach or suggest a formulation comprising coenzyme
Q10 and urea. Brief, page 10. As for FDC, appellants explain that the document
simply refers to a formulation comprising sodium lactate and urea. Brief, page
11. In all, appellants assert that there is no suggestion or motivation to combine
the reference in the manner necessary to arrive at appellants’ claimed invention.
Brief, pages 11-12. We agree.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only
by the prior art references and the then-accepted wisdom in the
field. . . . Close adherence to this methodology is especially
important in cases where the very ease with which the invention
can be understood may prompt one “to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.”
. . .
Most if not all inventions arise from a combination of old elements.
. . . Thus, every element of a claimed invention may often be found
in the prior art. . . . However, identification in the prior art of each
individual part claimed is insufficient to defeat patentability of the
whole claimed invention. . . . Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art,
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