Appeal No. 95-2215
Application 07/920,013
field of the invention would make the substitutions required. That knowledge cannot come
from the applicants' invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d
675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger,
815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp.
v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). The extent to which
such suggestion must be explicit in or may be fairly inferred from, the references, is
decided on the facts of each case, in light of the prior art and its relationship to the
invention. It is impermissible, however, simply to engage in a hindsight reconstruction of
the claimed invention using applicants' specification as a template and selecting elements
from references to fill the gaps. In re Gorman, 933 F.2d 982, 986-987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991).
As pointed out by appellants (Brief, page 17):
. . . there is no teaching or suggestion in the cited references to
combine asymmetric amplification with solution phase hybridization with a
fluorescently labeled probe.
We conclude that the rejection before us is predicated on impermissible hindsight and that
it would not have been obvious to one of ordinary skill in the art at the time of the invention
to combine the teachings of the individual references to arrive at the DNA detection
method of claims 1-10.
The rejection under 35 U.S.C. § 103 is reversed.
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