Appeal 2007-2111
Application 09/921,204
1 Appellant directs us to In re Wright, 848 F.2d 1216, 6 USPQ2d 1959 (Fed.
2 Cir. 1988), in support of Appellant's position. In In re Dillon, 919 F.2d 688,
3 693-94, 16 USPQ2d 1897, 1902 (Fed. Cir. 1990), the court, in an in banc
4 decision, overruled the holding in In re Wright, relied upon by Appellant.
5 Appellant [Dillon] cited In re Wright, 848 F.2d at 1219, 6 USPQ2d at 1961,
6 for the proposition that a prima facie case of obviousness requires that the
7 prior art suggest the claimed compositions’ properties and the problem the
8 applicant attempts to solve. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901.
9 Appellant Dillon asserted that none of the references relates to the problem
10 she confronted, Dillon, 919 F.2d at 693-94, 16 USPQ2d at 1902. The court
11 stated that:
12 it is not necessary in order to establish a prima facie case of
13 obviousness that both a structural similarity between a claimed and
14 prior art compound (or a key component of a composition) be shown
15 and that there be a suggestion in or expectation from the prior art that
16 the claimed compound or composition will have the same or a similar
17 utility as one newly discovered by applicant. To the extent that
18 Wright suggests or holds to the contrary, it is hereby overruled.
19
20 Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901.
21 The Supreme Court’s statement in KSR that “The first error of the
22 Court of Appeals in this case was to foreclose this reasoning by holding that
23 courts and patent examiners should look only to the problem the patentee
24 was trying to solve. 119 Fed. Appx., at 288. The Court of Appeals failed to
25 recognize that the problem motivating the patentee may be only one of many
26 addressed by the patent's subject matter. The question is not whether the
27 combination was obvious to the patentee but whether the combination was
28 obvious to a person with ordinary skill in the art. Under the correct
15
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