Appeal No. 2000-1930 Page 7
Application No. 08/232,452
1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). In other words, there must be
some teachings, suggestions or motivations in the art to make the combination.
Furthermore, it is the prior art, and not appellants’ invention, that must establish
the obviousness of the claimed invention. See In re Dance, 160 F.3d 1339,
1343, 48 SPQ2d 1635, 1637 (Fed. Cir. 1998). Finally, in order for meaningful
appellate review to occur, the examiner must present a full and reasoned
explanation of the rejection. See, e.g., In re Lee, 277 F.3d 1338, 1342, 61
USPQ2d 1430, 1432 (Fed. Cir. 2002).
In this case, the rejection has not set forth a prima facie case of
obviousness because the examiner has not set forth any teaching, suggestion or
motivation supplied by the prior art that would suggest the combinations of
record. The rejection acknowledges that Bell “does not suggest implanting the
dermal equivalent lattice alone,” but the examiner asserts that is because
retrovirally modified fibroblasts had not been available at the time Bell had been
published, and that two of the references, Anson and Palmer, specifically cite
Bell. Examiner’s Answer, page 9. The examiner asserts that the level of skill in
the art is high, i.e., possessing a Ph.D. or a M.D, and thus “one of ordinary skill in
the gene therapy art would have had the intellectual capacity to modify the prior
art and would not have slavishly followed the teachings of [Bell] without
modification.” Id. at 10. In addition, the examiner contends that the dermal
equivalent lattice was well characterized by Bell, and the use of the lattice would
moot the need for a full thickness skin graft, and the problems associated
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