Appeal No. 1997-2319
Application No. 08/147,707
We disagree. As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000):
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. [citations omitted]
In other words, “there still must be evidence that ‘a skilled artisan, . . . with no
knowledge of the claimed invention, would select the elements from the cited prior art
references for combination in the manner claimed.’” Ecolochem Inc. v. Southern
California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76 (Fed. Cir. 2000).
Admittedly, this is a close case. McClanahan explicitly suggests that induction of
IL-7R mRNA “may be evidence of lymphoid lineage commitment” in the mouse (page
2912), but we note that the suggestion is tempered somewhat by the acknowledgment
that it is not known whether “all of the receptor mRNAs expressed in [embryonic stem]
cells lead to the production of functional proteins, or if these molecules are expressed
on the surface” (page 2913). Terstappen’s method, on the other hand, successfully
and unambiguously identifies human CD34+, CD38+ cells as lymphoid-committed using
CD10 as a marker of lineage commitment. All things considered, we do not find
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