Appeal No. 2006-2387 Page 4
Application No. 10/304,514
“The PTO has the burden under section 103 to establish a prima facie case of
obviousness. It 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 Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) (citations omitted).
“Under section 103, teachings of references can be combined only if there is
some suggestion or incentive to do so.” ACS Hosp. Systems, Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). “[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 re Kahn,
441 F. 3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006).
We agree with Appellant that the examiner has not made out a prima facie case
of obviousness. In particular, the examiner has not adequately explained what would
lead a skilled artisan to add an organic acid such as cinnamic acid to the composition
disclosed by Ferrier. The examiner argues that a person of ordinary skill in the art
would have added cinnamic acid to Ferrier’s composition in order to adjust the pH and
dissolve copper produced by oxidation. See the Examiner’s Answer, pages 3-4.
Arimura indeed teaches that cinnamic acid is suitable for accomplishing these
objectives. See col. 2, lines 52-55 and line 64. Arimura also teaches, however, that
sulfuric acid accomplishes these goals as well. See col. 2, lines 52-55 (“The organic
acids or inorganic acids are added . . . for adjusting pH and for dissolving copper
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