Appeal No. 1996-2208
Application No. 08/180,194
[T]he combined teachings of the references in conjunction with the admitted
state of the prior art . . . reasonably teach to one of ordinary skill in the art that
a variety of protein products in need of debittering would reasonably be
expected by one of ordinary skill in the art at the time the claimed invention
was made to be debittered successfully by treatment with L. helveticus at
least at temperatures up to and including 53EC, which is within the required
range. (Supplemental Examiner’s Answer, page 5).
We disagree with the examiner’s conclusions. While one might recognize from
Bergey’s Manual that L. helveticus survives at temperatures up to 53EC, and from Parker
that bacterial extracts in general can be used over a wide temperature range, these facts
alone do not provide a reason, suggestion or motivation to modify the incubation
temperature of the debittering processes disclosed by Bartels I and II. As stated in Pro-
Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629 (Fed. Cir. 1996) (citation omitted), “It is well-established that 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.”
We have no doubt that the prior art could be modified in a manner consistent with
appellants’ specification and claims, but the fact that the prior art could be so modified
would not have made the modification obvious unless the prior art suggested its
desirability. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Here we find no reason or suggestion stemming from the prior art which would have led a
person having ordinary skill to the claimed method. In our judgment, the only reason or
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