Appeal No. 1996-2442
Application 08/062,021
agents, such as CMV and HIV, . . . the ordinary artisan would have been motivated to
detect simultaneously more than one infectious agent (via DNA analysis) using a
multiplex PCR method” (Examiner’s Answer, page 6).
We find the examiner’s reliance on “motivation” to be misplaced in its application
here. While it might be fair to say that one of ordinary skill in the art would have been
motivated to accomplish appellants’ outcome (i.e., efficient, simultaneous detection of
more than one nucleic acid target), that does nothing to explain why one skilled in the
art would have had reason to select discrete, specific teachings from the various
references cited and combine them in the manner required by even the broadest
composition claim, much less the broadest method and diagnostic kit claims, which
require the claimed composition.3 See In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d
1596, 1600 (Fed. Cir. 1988) (“One cannot use hindsight reconstruction to pick and
choose among isolated disclosures in the prior art to deprecate the claimed invention”).
Moreover, the examiner has made no attempt to address the narrower method
and kit claims (e.g., claims 39 through 42), which require primers with specific
sequences, or the specific limitations of the claimed diagnostic element (claim 37).
We have no doubt that the prior art could be modified in a manner consistent
with appellants’ specification and claims, but the fact that the prior art could be so
3 As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted), “It is well established
that before a conclusion of obviousness may be made based upon a combination of
references, there must have been a reason, suggestion or motivation to lead an
inventor to combine those references.”
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