Appeal No. 1999-0123
Application No. 08/406,239
“[T]he suggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem
to be solved.” … However, there still must be evidence that “a skilled
artisan, confronted with the same problems as the inventor and with
no knowledge of the claimed invention, would select the elements
from the cited prior art references for combination in the manner
claimed.” … “[A] rejection cannot be predicated on the mere
identification … of individual components of claimed limitations.
Rather particular findings must be made as to the reason the skilled
artisan, with no knowledge of the claimed invention, would have
selected these components for combination in the manner
claimed.”…. [Citations omitted].
On this record we agree with appellants (Brief, page 12) that the disclosure
of Herrmann “does not apply to the assay disclosed by Zherdev et al., nor is it
logically or reasonably combined with the assay of Zherdev et al. for various
reasons.” Among these reasons, appellants argue (Brief, page 13) that if all the
assay components were incorporated into the solid support of Zherdev it “would
defeat the assay, since the final step of the Zherdev et al. assay can only be
performed after unbound components … have been washed away.” In addition,
appellants argue (Brief, page 13) that “a fleece or film [taught by Herrmann] is hardly
interchangeable with a well plate … there is no suggestion as to how the two
disclosures can be combined in a practical sense by the routine engineer … and
there is no motivation to lift the indicator disclosures out of Herrmann et al. and
incorporate them into Zherdev et al.
We agree with appellants. While a person of ordinary skill in the art may
possess the requisite knowledge and ability to modify the protocol taught by
Zherdev, the modification is not obvious unless the prior art suggested the
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