Appeal No. 1996-2211
Application No. 08/018,546
According to the examiner, “[i]t is well within the purview of the skilled artisan to substitute one
well known bovine embryo culture medium for another one. . . . It would have been further obvious to
substitute the culture mediums of Takahashi, Ealy or Bannai for the culture medium of Hasler in view of
the advantageous in which Takahashi, Ealy and Bannai teach for their particular mediums.” See,
Examiner’s answer at page 4. However, the mere fact that the prior art could be so modified, would not
have made the modification obvious unless the prior art suggested the desirability of the modification. In
re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398-99 (Fed. Cir. 1989); In re Gordon, 733
F.2d 900, 902, 221 USPQ 1123, 1127 (Fed. Cir. 1984). In combining the references, the examiner did
not provide a “reason, suggestion or motivation” which would have lead one to modify Hasler’s method.
As stated in Pro-Mold and 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.
Hasler teaches the safe and effective transport of bovine embryos in a minimal media. Each of
the secondary references teaches a culture media containing a thiol compound can support, increase, or
improve bovine embryo development and/or survival. At page 4 of the Examiner’s Answer, the
examiner concludes that, “[i]t would have been further obvious to substitute the culture mediums of
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