Appeal No. 1995-2518
Application 07/895,581
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. It is impermissible,
however, simply to engage in a hindsight reconstruction of the claimed inventions using
applicants' claimed invention as a template and selecting elements from references to fill
the gaps. In re Gorman, 933 F.2d 983, 986-987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991). We find no reasonable suggestion for combining the genetic characteristics of the
S. cerevisiae, which lack proteolytic yscA, yscB, yscY or yscS activity, as described by
Achstetter with the genetic altered S. cerevisiae of Bussey to arrive at a strain of which
lacks both carboxypeptidase ysc" activity and at least one proteolytic activity selected
from yscA, yscB, yscY and yscS.
The examiner has proposes that, if the combination of the two genetic traits of
Bussey and Achstetter were combined into a single strain of Sc, one skilled in the art
would have had a reasonable expectation of success of obtaining the S. cerevisiae useful
in the manner claimed. In re O'Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed.
Cir. 1988). However, in addition to "a reasonable expectation of success" there must also
be a reason, suggestion or motivation to combine the teachings of the prior art in the first
place. In re O'Farrell, 853 F.2d at 902, 7 USPQ2d at 1680. The examiner urges that one
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