Appeal No. 1998-2047
Application No. 08/400,559
known, and that S. cepivorum was known soil-borne plant pathogen. The
examiner also relied on the specification’s admission that S. cepivorum was
known to infect onions. The examiner concluded that the prior art would have
motivated the skilled artisan to practice the claimed invention with a reasonable
expectation of success.
“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.”
Pro-Mold & Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Although couched in terms of combining teachings found in the
prior art, the same inquiry must be carried out in the context of a
purported obvious “modification” of the prior art. The mere fact that
the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification.
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Here, the examiner has concluded that it would have been obvious to
modify the prior art methods by applying cyproconazole to allium seeds rather
than to allium plants. The examiner found motivation to so modify the prior art to
be provided by Smith, who teaches that S. cepivorum is an “important soil-borne
pathogen.” We do not agree that Smith would have motivated those skilled in the
art to treat allium seeds with cyproconazole. While Smith teaches that S.
cepivorum is a known plant pathogen, she does not identify onions or other
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