Appeal No. 2006-1021 Page 12
Application No. 09/851,882
there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by
the applicant. [Citations omitted].
In other words, “there still must be evidence that ‘a skilled artisan, . . . 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 Cal. Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76 (Fed.
Cir. 2000). At best, the statement of the rejection establishes that individual parts
of the claimed invention were known in the prior art. In our opinion, however, the
examiner has failed to establish why one of ordinary skill in the art would have
combined the references in the manner necessary to arrive at appellants’
claimed invention.
For the foregoing reasons we reverse the rejection of claims 1-12, 14, 15,
17, 19, 20, 21, 23, 24, 29, 30, 34, 35, 38-41, 43-46, and 54 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Product Insert, Press
Release, Business Wire, Bertelli, and FDC.
Rejection III:
Claims 13, 16, 18, 22, 28, 31-33, 36, 42, 47-53, and 55-68 stand rejected
under 35 U.S.C. § 103 as being unpatentable over the combination of Product
Insert, Press Release, Business Wire, Bertelli, FDC, and Hoppe. As we
understand the examiner’s statement of the rejection the combination of Product
Insert, Press Release, Business Wire, Bertelli, and FDC is relied upon as set
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