Appeal No. 2003-1167 Page 5
Application No. 09/195,340
While we do not find the disclosures in Sierra and Marx to be as limited as
appellants assert, we agree with appellants (id.) that Sierra, Marx and Hunziker,
fail to disclose, individually, or in combination, the use of a biologically active
molecule effective to promote vascularization or revascularization of a tissue as
is required by appellants’ claimed invention. Accordingly, Sierra, Marx and
Hunziker fail to make up for the deficiency in Hubbell. In this regard, we remind
the examiner that 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 In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
On this record, the examiner has failed to identify any evidence that would
have led a person of ordinary skill in the art at the time the invention was made to
combine the prior art references in a manner that would result in appellants’
claimed invention. Therefore, it is our opinion that the examiner failed to provide
the evidence necessary to support a prima facie case of obviousness.
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