Appeal No. 1999-1215
Application No. 08/401,192
must be evaluated as a whole.” See W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984); In re Kuderna, 426 F.2d 385, 390, 165 USPQ 575, 578-79
(CCPA 1970). Furthermore, “it is impermissible within the framework of section
103 to pick and choose from any one reference only so much of it as will support
a given position to the exclusion of other parts necessary to the full appreciation
of what such reference fairly suggests to one skilled in the art.” In re Wesslau,
353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965); see also In re Mercer,
515 F.2d 1161, 1165-66, 185 USPQ 774, 778 (CCPA 1975).
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 must be some reason, 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 cannot come from the applicants'
disclosure of the 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). On
the record before us, we find no reasonable suggestion for combining the
Blumenfeld teachings of the advantages of using a circular oligo’s with two
regions with the teaching of Hélène drawn to single region linear oligos.
Inoue’s teaching of oligo sequences cleaved by RNase H fails to make up
for the deficiencies in the combination of Hélène in view of Blumenfeld.
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