Appeal No. 1998-1719
Application No. 08/442,603
doubt that the invention is patentable, resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies in its factual basis.”
In addition, where we need specificity in the examiner’s analysis, to lead us
to the modifications made in pGB20, we are only met with vagueness and
generalities. We find no appreciation in the examiner’s statement that Martin could
or should be modified in the manner suggested in the concurring opinion. It does
not appear to us that the examiner fully appreciated the degree of specificity
required to get from the gene taught by Martin, to the claimed pGB20 construct
claimed.
Furthermore, to the extent that the concurrence relies on Nomiya, we note
that figures 1 and 2 at issue in Nomiya were labeled “prior art”. In Nomiya, the
examiner’s first rejection of the appealed claims identified and specifically
recognized that figures 1 and 2 illustrated the prior art. Nomiya 509 F.2d at 570,
184 USPQ at 611. Thus, from the very first rejection, Nomiya had notice of the
“prior art” relied upon and an opportunity to address this “prior art.” That is not the
case here.
The Nomiya court also recognized, in reversing the examiner’s rejection
under 35 U.S.C. § 103, that “[t]he court must be ever alert not to read obviousness
into an invention on the basis of the applicant’s own statements; that is, we must
view the prior art without reading into that art appellant’s teachings.” Nomiya 509
F.2d at 571, 184 USPQ at 612.
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