Appeal No. 2006-2627 Page 12
Application No. 09/947,833
Patentability is determined based on a preponderance of the evidence. See In re
Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443,1445 (Fed. Cir. 1992) (“[T]he
conclusion of obviousness vel non is based on the preponderance of evidence and
argument in the record.”). While the suggestion test may be flexible, it still requires
evidence to show that modifying the prior art product would have been obvious. See
Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
1366, 80 USPQ2d 1641, 1649 (Fed. Cir. 2006) (“When not from the prior art references,
the ‘evidence’ of motive will likely consist of an explanation of the well-known principle
or problem-solving strategy to be applied.”).
In our view, neither the examiner nor the dissent has provided evidence or
reasoning to show, by a preponderance of the evidence, that the cited references would
have suggested the instantly claimed composition to those of ordinary skill in the art.
3. Obviousness-type double patenting
The examiner rejected claims 1-5, 7, 9-16, 18, and 20-24 for obviousness-type
double patenting as follows:
• claims 1-5, 7, 23, and 24 were rejected as obvious variants of claims 14-16, 20,
21 and 26-29 of U.S. Patent No. 6,652,887 in view of Wironen;
• claims 1, 3-5, 7, 9-12, 14-16, 18, and 20-24 were provisionally rejected as
obvious variants of claims 23-30 of copending Application No. 10/060,697 in view of
Wironen; and
• claims 1-5, 7, 9-16, 18, and 20-24 were provisionally rejected as obvious
variants of claims 12 and 21 of copending Application No. 09/327,761 in view of
Wironen.
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