Appeal 2007-0861
Application 09/381,484
Finally, we also disagree with Appellants’ argument that inherency
has no place in an obviousness analysis. It is true that an unknown, inherent
property cannot be relied on as a reason for combining the teachings of the
prior art. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (“‘That
which may be inherent is not necessarily known. Obviousness cannot be
predicated on what is unknown.’ Such a retrospective view of inherency is
not a substitute for some teaching or suggestion supporting an obviousness
rejection.”).
However, it is also true that the prior art need not suggest combining
references for the same reason that a patent applicant combined them. See
KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741-42 (2007) (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
. . . [A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.”).
Here, the cited references would have suggested feeding preterm
infants a formula containing ARA and DHA because they are “critical
elements of muscle, organ and vascular tissues” (Kyle, col. 1, ll. 26-28),
because they “are necessary for proper growth and development” (Crozier,
p. S96, Summary), and because “it is known that the growing organism
needs large quantities of these substances (cholesterol, arachidonic acid,
docosahexaenoic acid) in a certain ratio to each other for the synthesis of
new cell wall material” (Schweikhardt, p. 1, ¶ 2). The cited references
therefore would have made obvious the method defined by claim 1.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013