Appeal No. 95-2889 Page 10
Application No. 07/525,231
the relevant factors." Arkie Lures, Inc. v. Gene Larew
Tackle, Inc., 119 F.3d 953, 957, 43 USPQ2d 1294, 1297 (Fed.
Cir. 1997).
One skilled in the art may have been able to modify
Suzuki by comparing counts of the population of cells before
and after T-cell removal to arrive at a T-cell count; however,
we find nothing in Suzuki, Saunders, or the examiner’s
arguments that persuades us that one skilled in the art would
have been motivated to modify from the direct counting method
of Suzuki and to select an indirect method of counting as
presently claimed. Suzuki does not suggest that anything other
than a direct count of the labeled T-cells is desirable.
Saunders, while teaching an indirect count to obtain a more
accurate T- and B-cell count, is directed to a different
method of labeling and detection. One skilled in the art
would not have looked to Saunders for guidance when counting a
cell population of interest using the Suzuki method or vice
versa. Combining references without evidence of a suggestion,
teaching, or motivation is the essence of hindsight. In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). Consequently, we reverse the rejection of independent
claims 1 and 17. The rejection of dependent claims 1-6, 9-23,
15, 16, 18-22, 25-29, 31, and 32 is also reversed.
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