Appeal No. 1995-4717
Application 07/876,288
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, implicitly or explicitly, in the prior art
whereby a person of ordinary skill in the field of the invention would make the substitutions
required. One can not substitute the skill in the art for a teaching in the prior art. In re
Kratz, 592 F.2d 1169, 1175, 201 USPQ 71, 76 (CCPA 1979). Also, that knowledge can
not come from the applicant'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). It is impermissible to
engage in a hindsight reconstruction of the claimed invention using applicant'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). We find no
reasonable suggestion, motivation, or direction in the prior art relied upon by the examiner,
which would have lead one of ordinary skill in this art to generate random peptide libraries
using a carrier protein-cleavage site-random protein construct, as claimed. We conclude
that the examiner has failed to establish a prima facie case of unpatentability of the
claimed subject matter. Where the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir.1988). We, therefore, reverse the rejection of claims 1-6, 9 and 10
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