Appeal No. 1996-1748
Application 07/747,670
missing from the examiner's statement of either rejection appearing on pages 3-4 of the
Examiner's Answer are cogent reasons why one of ordinary skill in the art would have found it
obvious at the time of the present invention to arrange the various elements in the manner
required by the claims on appeal. In stating the rejections, the examiner only briefly describes
what each reference purportedly discloses followed by a perfunctory, pro forma statement of
obviousness. However, as set forth in Pro-Mold & Tool Co v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996):
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.
Here, the references relied upon to describe the various elements required to form the
claimed transgene indicate that the various nucleotide sequences can be used in diverse ways.
The examiner has not explained why it would have been obvious to pick and choose the various
elements needed in order to arrive at the claimed transgene while ignoring other elements
described by the references and combine the selected elements in order to arrive at the claimed
subject matter. On this record, the only reason we can find for combining the elements in the
manner required to arrive at the claimed invention is from a consultation of appellants' disclosure
of the present invention in this application. This, of course, amounts to improper hindsight.
Absent a fact-based explanation from the examiner as to why it would have been obvious
to one of ordinary skill in the art to construct a recombinant transgene as required by claim 7 on
appeal, we find that the examiner has not properly established her initial burden of providing
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