Appeal No. 96-1027
Application 08/162,288
constructs with the use of sense constructs, we do not see that a basis has been formed for
combining the references to reach the claimed process.
"To establish a prima facie case of obviousness based on a combination of
references, there must be a teaching, suggestion or motivation in the prior art to make the
specific combination that was made by the applicant." In re Dance, 160 F.3d 1339, 1343,
48 USPQ2d 1635, 1637 (Fed. Cir. 1998). While there is no doubt that each of the claimed
limitations are taught by the cited references, the mere fact that the prior art could be
modified to obtain the claimed process does not make 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). Something in the prior art as a whole must
suggest the desirability and thus the obviousness of making the combination. Lindemann
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 for using the partial constructs of Jorgensen in a process like Hiatt's, to modify
the expression of fruit-ripening enzymes in plant cells, 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
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