Appeal No. 2001-2401
Application 08/277,225
and antibody. In our view, the only suggestion to combine the cited references comes
from appellants' disclosure.
The Federal Circuit has stated that "[the] mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the modification." In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The Federal
Circuit also has found that if a rote invocation of a high level of skill in the art could
suffice to supply a motivation to combine, the more sophisticated scientific fields would
rarely, if ever, experience a patentable technical advance. “To counter this potential
weakness in the obviousness construct, the suggestion to combine requirement stands
as a critical safeguard against hindsight analysis and rote application of the legal test
for obviousness.” In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed.
Cir. 1998). Moreover, the use of hindsight in the selection of references that comprise
the case of obviousness is forbidden. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991).
In the present case, the examiner has failed to indicate the specific
understanding or principle within the knowledge of a skilled artisan, explicit or implicit,
that would have motivated one with no knowledge of appellant’s invention to make the
combination in the manner claimed. In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d
1453, 1457 (Fed. Cir. 1998). In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
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