Appeal No. 1997-2510
Application No. 07/868,539
combined references of Vickers et al., Bielinska et al., Sakata et al., Uhlmann et
al., and Inouye ….” Vickers, however, is not part of this rejection.
With regard to the modification of Bielinska with Sakata, absent
appellant’s disclosure, the examiner has not identified any portion of the
references relied upon that suggests to a person of ordinary skill in the art to
remove the loop from Sakata’s stem-loop construct and place it on the construct
of Bielinska.
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.”
…
Most if not all inventions arise from a combination of old elements.
… Thus, every element of a claimed invention may often be found
in the prior art. … However, identification in the prior art of each
individual part claimed is insufficient to defeat patentability of the
whole claimed invention. … Rather, to 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]
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