Appeal 2007-1396
Application 10/375,235
Appellants have not explained how the evidence establishes the effect of the
combined ingredients is greater than the sum of the effect of each ingredient
separately, which is necessary to establish synergy. See Merck & Co., Inc.
v. Biocraft Labs., Inc., 874 F.2d 804, 808, 10 USPQ2d 1843, 1847 (Fed. Cir.
1989) (“But when an inventor tries to distinguish his claims from the prior
art by introducing evidence of unexpected ‘synergistic’ properties, the
evidence should at least demonstrate ‘an effect greater than the sum of the
several effects taken separately.’ Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282, 189 USPQ 449, 453 (1976).”); In re Luvisi, 342 F.2d 102, 109,
144 USPQ 646, 652 (CCPA 1965) (“‘Synergism’ is a very broad term and
means ‘the combined action of two or more agents * * * that is greater than
the sum of the action of one of the agents used alone * * *.’ Webster’s Third
New International Dictionary (1961).”).
In this respect, Appellants have the burden to submit an explanation or
evidence with respect to the practical significance of the asserted results vis-
à-vis the teachings of the applied references and why the results would have
been considered unexpected in view of the prior art by one of ordinary skill
in this art. See, e.g., In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
1365-66 (Fed. Cir. 1997); In re Merck, 800 F.2d 1091, 1099,
231 USPQ 375, 381 (Fed. Cir. 1986); In re Longi, 759 F.2d 887, 897,
225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Lindner, 457 F.2d 506, 508,
173 USPQ 356, 358 (CCPA 1972); In re Klosak, 455 F.2d 1077, 1080,
173 USPQ 14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248,
169 USPQ 303, 306 (1971). On this record, Appellants have not carried this
burden.
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