"Examiner must articulate "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does."

BPAI CASE
Ex parte FRANCIS X. HURSEY
Appeal 2009-003346
Application 10/939,687
Technology Center 1600
Decided: June 11, 2009

Claim at issue:
1. A composition for promoting the formation of clots in blood, said composition comprising: a binder; a zeolite disposed in said binder, said zeolite having an adjusted calcium content via the addition of a calcium-containing compound to said zeolite, said calcium content being between about 75 wt.% to about 83 wt.%, said composition being operable to reduce a heat of hydration when exposed to blood.

Examiner had found two references that described combining a zeolite with a binder and zeolite with calcium oxide. The prior art did not teach the exact percentage or that it would lead to a reduced heat of hydration. The Board found that reducing the heat of hydration is in contrast to what the prior art taught. The Examiner argued that it was obvious because it was just about optimization of the amount of calcium and that would it would have been obvious to optimize it. The Examiner then contended that the reduced heat of hydration would have been an inherent property in the optimized composition. The Board disagreed that it would have been obvious.

The Board stated:

In order to support such a conclusion the Examiner must articulate “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. The Examiner has failed to articulate such a reason on this record. More particularly, the Examiner has failed to explain why a person of ordinary skill in the art would optimize the calcium content to a weight percentage that reduces the heat of hydration when the evidence the Examiner relies upon expressly teaches that it is advantageous to utilize a zeolite that generates heat as it absorbs moisture (FF 6). Simply stated the evidence relied upon by the Examiner directs one of ordinary skill in this art away from Appellant’s claimed invention.

The rejection was reversed. Full opinion can be found here.