Appeal No. 95-2319
Application 07/812,880
receptor proteins, wherein a host cell is transfected with a chimeric receptor gene and a
reporter gene which is functionally linked to an operative hormone response element. The
transfected host cells are challenged with a candidate ligand and induction of the reporter
gene is monitored as an indicator as to whether the test compound binds to the receptor
protein. Evans does not disclose the use of virally infected cells in the disclosed assay.
As conceded by appellant (Reply Brief, page 6):
. . . the Stryer reference teaches methods for infecting cells with a
virus to produce virus-infected cells.
However, we find ourselves in agreement with appellant's statement (Reply brief,
page 6):
. . . Stryer indisputably does not suggest using virus-infected cells in a bioassay . . . ..
We also agree with appellant that more is needed to support the combination of Evans and
Stryer. To establish a prima facie case of obviousness, there must be some reason,
suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field
of the invention would make the substitutions required. That knowledge can not come from
the applicant's invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675,
678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1143, 227 USPQ 543, 551 (Fed. Cir. 1985). The extent to which such suggestion must be
explicit in or may be fairly inferred from the references, is decided on
the facts of each case, in light of the prior art and its relationship to the invention. In re
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