Appeal No. 2001-0562 Page 10
Application No. 08/460,478
motivated one of ordinary skill in the art to combine their teachings to arrive at
the claimed invention.” According to appellants (Reply Brief, page 5) “there is
no suggestion in Cohen-Hageunauer or the other secondary references that it
would have been desirable to substitute Geller’s herpesvirus vectors for an
adenovirus vector.” We agree.
As set forth in In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988), “[t]he consistent criterion for determination of
obviousness is whether the prior art would have [1] suggested to one of ordinary
skill in the art that this process should be carried out and [2] would have a
reasonable likelihood of success, viewed in the light of the prior art.” With regard
to the first criterion, we remind the examiner that a prima facie obviousness
based on a combination of references requires that the prior art provide “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).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available, however,
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See Dow.
Stated differently, while the examiner recognizes (Answer, pages 15-16) that
adenoviral vectors can infect cells of the central nervous system, where in the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007