Appeal No. 1997-2510
Application No. 07/868,539
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).
In addition, we are not persuaded by the examiner’s argument that a
person of ordinary skill in the art would make such a modification to increase the
stability of the molecule in vivo. The examiner fails to explain why one of
ordinary skill in the art would expect the six nucleotides of Sakata to maintain
their unusually high Tm in the context of the construct taught by Bielinska,
without interfering with the function of the Bielinska construct. As discussed,
supra, to establish a prima facie case of obviousness, there must be both some
suggestion or motivation to modify the references or combine reference
teachings and a reasonable expectation of success. In re Vaeck, 947 F.2d at
493, 20 USPQ2d at 1442. At best, the examiner has established an “obvious to
try” situation. “Obvious to try”, however, is not the standard of obviousness
under 35 U.S.C. § 103. In re O’Farrell, 858 F.2d 894, 903, 7 USPQ2d 1673,
1680 (Fed. Cir. 1988).
On the record before us, we find no reasonable suggestion for combining
the teachings of the references relied upon by the examiner in a manner which
would have reasonably led one of ordinary skill in this art to arrive at the claimed
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