Appeal No. 94-1911
Application 07/662,735
skilled in the art are unable to make recombinantly modified
microorganisms which function in the particular manner indicated
in the claims.
The prior art cited by the examiner appears to be consistent
with appellants’ position that their specification would have
objectively enabled the claimed invention. Nevertheless, while
the combined prior art teachings show that persons skilled in the
art had all the information necessary to successfully make and
use the invention claimed, the references do not establish
unpatentability under 35 U.S.C. § 103. It is improper to “pick
and choose among the individual elements of assorted prior art
references[, as the examiner here has done,] to recreate the
claimed invention.” Smithkline Diagnostics, Inc., v. Helena
Labs. Corp., 859 F.2d 878, 887, 8 USPQ2d 1468, 1475 (Fed. Cir.
1988). Rather, the examiner must “show some teaching or
suggestion in the references to support their use in the
particular claimed combination.” Id. In re Dow Chemical Co.,
837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir. 1988) instructs at 473,
5 USPQ2d at 1531:
The consistent criterion for determination of
obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that
this process should be carried out and would have a
reasonable likelihood of success . . . . Both the
suggestion and the expectation of success must be
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