Appeal No. 2000-1812
Application No. 08/432,483
claimed invention. However, what is missing from the examiner’s rejection of claims 1, 2,
6 - 8 and 27 is a teaching or suggestion to be found in the prior art which would have
reasonably led those of ordinary skill in this art to the claimed invention. That Swenson and
Valmori may, individually, describe components of the claimed invention, in the absence of
evidence or facts which would reasonably suggest the modification of the explicit teaching
of these references, would not have led one of ordinary skill to the claimed invention since
the prior art does not suggest the desirability of the modification. In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In re Fritch, 972 F.2d 1260, 1266,
n.14, 23 USPQ2d 1780, 1783-84, n.14 (Fed. Cir. 1982).
In the absence of such evidence, the only suggestion to prepare a hybrid peptide as
presently claimed in claims 1, 2, and 27 and to incorporate such a peptide into a vaccine
composition as claimed in claims 6, 7, and 8, is provided by appellant's disclosure of the
invention. However, use of this information as a basis for establishing a prima facie case
of obviousness, within the meaning of 35 U.S.C. § 103, would constitute impermissible
hindsight. 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 modifications
required. That knowledge can not come from the applicant’s 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). Thus, on this record, the examiner has not provided those facts or evidence which
would reasonably support a conclusion that the claimed subject matter would have been
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