Appeal No. 2007-0623 Page 5
Application No. 10/380,591
Therefore, the issue presented to this panel distills down to whether a
person of ordinary skill in the art would have been motivated to react a
compound of formula V with a compound of formula IX to produce a compound
of formula I. In our opinion, the preponderance of evidence4 on this record
provides the motivation to perform this reaction and the rejection of claim 1 is
affirmed.
“In rejecting claims under 35 U.S.C. § 103, the [E]xaminer bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993), citation omitted. “The test for obviousness is not express suggestion of
the claimed invention in any or all of the references but rather what the
references taken collectively would suggest to those of ordinary skill in the art
presumed to be familiar with them.” In re Rosselet, 347 F.2d 847, 851,
146 USPQ 183, 186 (CCPA 1965).
Prima facie obviousness based on a combination of references requires
that the prior art provide “a reason, suggestion, or motivation to lead an inventor
to combine those references.” Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available, however,
4 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.”).
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