Appeal No. 95-4321
Application 07/976,241
supply that which is missing from Beadle. We agree with appellants' statements (principal
brief, page 11-12):
There is no suggestion in Fiehring et al. of the use of selective fermentation
to separate glucose from galactose as is required according to the Group
One claims.
There is no suggestion in Hartley et al. that it would be possible to
selectively ferment one sugar to separate it from another.
A reasonable reading of Fiehring indicates that lactose and its decomposition
products galactose and glucose are all being removed from the milk products described.
Similarly, Hartley does not disclose or suggest the selective fermentation of glucose over
D-galactose. To establish a prima facie case of obviousness, there must be more than
the demonstrated existence of all of the components of the claimed process. 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 applicants' 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 applicants' claimed invention as a template
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