Appeal No. 1996-3330
Application 07/861,458
suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field
of the invention would make the substitutions required. That knowledge can not come
from the applicants' invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d
675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). The extent to which such suggestion
must be explicit in or may be fairly inferred from, the references, is decided on the facts of
each case, in light of the prior art and its relationship to the invention. It is impermissible,
however, simply to engage in a hindsight reconstruction of the claimed invention using
applicants' disclosed invention as a template and selecting elements from references to fill
the gaps. In re Gorman, 933 F.2d 983, 986-987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991). Here, the examiner has provided no facts or evidence which would have
reasonably led one of ordinary skill in this art to the method of isolating unknown structural
homologues of genes identified in a phylogenetically related animal in the manner claimed.
Where, as here, the examiner fails to establish a prima facie case of obviousness, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir.1988). The rejection of claims 38-54, 58-60, 66-81, and 85-87
under 35 U.S.C. § 103 is reversed.
Other Issues
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