Appeal No. 1996-3797
Application No. 08/070,162
cloned, more is required. The 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 Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we find no reason stemming from the prior
art which would have led a person having ordinary skill to the claimed invention. The
examiner proposes that one would be motivated to modify the techniques and cells of
Suter to arrive at stably transformed cells in order to more easily maintain a readily
available and reliable screening assay system. However, as pointed out by appellants, the
examiner offers no evidence and points to no facts to be found in the prior art which would
reasonably suggest the need for such a system. In our judgment, the only reason or
suggestion to combine the teachings of these references, in the manner proposed by the
examiner, comes from appellants’ specification. Neither Hall nor Rothman provide that
which is missing from Suter, Sambrook, and Takai.
In the remaining rejections under 35 U.S.C. § 103, the examiner has relied upon
Suter in combination with Mills and Rothman or Suter in combination with Mills Rothman,
Sambrook, and Hall. Mills, Rothman, Sambrook, and Hall do not provide that which we
have determined to be missing from the combination of Suter with Sambrook and Takai.
To establish a prima facie case of obviousness, there must be more than the
demonstrated existence of all of the components of the claimed subject matter. There
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