Appeal No. 1995-4400
Application 07/694,302
Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462, 221
USPQ 481, 488 (Fed. Cir. 1984). Here the examiner has not pointed to anything in the
references which would lead one to the claimed combination and we can find none. The
only reason to obtain monoclonal antibodies specific for an antigenic determinant of a
gp85 envelope precursor protein characteristic of a methanol-fixed F-MuLV infected cell is
provided by appellants' disclosure. It is however impermissible, as examiner has done
here, to use appellants' specification as a blueprint to reach the claimed invention from the
prior art disclosures. "When prior art references require selective combination by the court
to render obvious a subsequent invention, there must be some reason for the combination
other than hindsight gleaned from the invention itself." Uniroyal Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988). Accordingly, we hold that
the examiner has not established a prima facie case of obviousness of the claims.
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