Appeal No. 2000-0630
Application No. 07/780,717
near one another at the end of the barrel opposite the biotin site and at
corners of the tetramer. There is ample space for the terminal peptides in
the holo molecule, but we have no information about their disposition if
indeed they are ordered. (Citations omitted)
We understand Hendrickson to teach that the C- and N-terminal sequences beyond
residues 16-133 are flexible and not organized into the barrel structure, but we do not see
any statement in Hendrickson regarding functionality or lack of functionality for the residues
beyond 16- 133.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000) (citations omitted):
A critical step in analyzing the patentability of claims pursuant to section
103(a) is casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field. [] Close adherence to
this methodology is especially important in cases where the very ease with
which the invention can be understood may prompt one “to fall victim to the
insidious effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.
. . . [T]o establish obviousness based on a combination of the elements
disclosed in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific combination that was
made by the applicant.
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 modified
would not have made the modification obvious unless the prior art suggested the
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