Appeal No. 1996-0906
Application No. 08/110,341
supra, the object of Thom’s invention is to avoid the very step the examiner cites
Thom as suggesting.
With regard to Matsuo, appellant argues (Brief, page 15) that “the mere
showing that lipase is adsorbed to cellulose, which the Examiner attributes to
Matsuo et al., does not remedy the significant failings and incompatibilities … of the
Clark and Thom et al. references.”
Before a conclusion of obviousness may be made based on a combination
of references, there must have been a reason, suggestion or motivation to lead an
inventor to combine those references. Pro-Mold and Tool Co. v. Great Lakes
Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). When
identifying the motivation required to combine references the examiner is not free to
pick and choose from any one reference only so much of it as will support a given
position to the exclusion of other parts. Wesslau, 353 F.2d at 241, 147 USPQ at
393; see also Mercer, 515 F.2d at 1165-66, 185 USPQ at 778.
On these facts, we find that the only reason or suggestion to modify the
references to arrive at the present invention comes from appellants’ specification.
Contrary to the examiner’s position, while Thom references as background a prior
art teaching of a lipase liquor for use in a soaking step, the objective of Thom’s
invention was to avoid this cumbersome wash process that is of limited applicability
in practice.
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