Appeal No. 95-4481
Application No. 07/911,667
the Fc regions as taught by Pope et al. to bind to the immunoadsorbent solid support and
immunoassays for the detection of dsDNA antibodies as taught by Emlen.” With regard to
claims 3 through 7, the examiner believes that it would have been obvious “to develop a
range of dsDNA labels used for quantitative detection.” According to the examiner, the
reason, suggestion or motivation to combine these references is “to achieve methods of
assaying for antibodies to human double-stranded DNA in a human-serum specimen as a
whole . . . for the expected advantage of diagnosis and management of patients with . . .
diseases associated with antibodies to double-stranded DNA.” See the Answer, pages 5
2
and 7. We disagree.
We have no doubt that the prior art could be modified in a manner consistent with
appellant’s specification and claims. The mere fact that the prior art could be so modified,
however, would not have made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). Here, we find no cogent reason stemming from the prior art which would
have led a person having ordinary skill to the claimed invention. In our judgment, the
2 As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted), “It is well-established
that before a conclusion of obviousness may be made based on a combination of
references, there must have been a reason, suggestion or motivation to lead an inventor to
combine those references.”
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