Appeal No. 1997-2517
Application No. 08/155,102
“It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.” Pro-
Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996).
[A] suggestion, teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available,
however, does not diminish the requirement for actual evidence.
That is, the showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
“Combining prior art references without evidence of such a suggestion, teaching,
or motivation simply takes the inventor’s disclosure as a blueprint for piecing
together the prior art to defeat patentability—the essence of hindsight.” Id.
In this case, we find that the references relied on by the examiner do not
provide the requisite motivation to produce the claimed DNA. As Appellants
argue, the references would have led a skilled artisan to expect that a/ß
heterodimers comprising an a subunit with a mutation in amino acids 88-92
would have been biologically inactive and unable to bind to the hormone
receptor. See Merz, page 1792 (“The recombination product des-(88-92)-a-
subunit + native ß-subunit shows no significant biological activity.”) and page
1795 (“The diminution in biological activity therefore seems to be caused rather
by a change of the ability to bind to the receptor than by a reduced plasma half-
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