Appeal No. 1995-2903
Application No. 07/693,055
and the paragraph bridging pages 8-9). The examiner points to no evidence to be found in
the prior art in support of the stated motivation. Neither Larson nor Neurath suggest any
need for or purpose in substituting a lectin binding material for the antibody binding
material of Neurath in an immunoassay for detecting the presence of an antibody to a virus
in a sample. 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 appellant'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. It is impermissible,
however, simply to engage in a hindsight reconstruction of the claimed inventions using
appellant's 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). On the record before us, we find that the examiner has failed to establish that it
would have been obvious to one of ordinary skill in the art at the time of the invention to
substitute lectin for the viral antibody binding agent of Neurath for binding glycoproteins to
an assay surface as claimed. Having determined that the examiner has failed to establish
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