Appeal 2007-1073
Application 10/308,176
“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
However, “before a conclusion of obviousness may be made based on a
combination of references, there must have been 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 motivation to combine
[references] need not be found in the prior art references themselves, but
rather may be found in ‘the knowledge of one of ordinary skill in the art or,
in some cases, from the nature of the problem to be solved.’” Dystar
Textilfarben Gmbh v. C.H. Patrick Co., 464 F.3d 1356, 1366, 80 USPQ2d
1641, 1649 (Fed. Cir. 2006) (emphasis in original, quoting In re Dembiczak,
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)).
In the present case, we do not find that the Examiner has provided
evidence of a sufficient reason, suggestion or motivation to combine the
cited references arising either from the prior art, from the nature of the
problem solved, or from the knowledge of one of ordinary skill in the art.
We particularly find no teaching in Barbier or Chen that would have led one
of ordinary skill in the art to substitute a small amount of tocopherol
antioxidant with a large amount of TPGS surfactant, as claimed. Nor do we
find motivation to replace the polyethylene glycol emulsifier described in
Barbier with tocopherol PEG-1000 succinate surfactant as taught by Chen,
or an indication that one of ordinary skill in the art would have been led to
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013