Appeal No. 1999-0413
Application No. 08/294,819
concentrations would be effective to aggregate the alternatively labeled peptides.”
However, the examiner again fails to support her conclusion.
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 Ato 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]
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).
For the reasons set forth above, we find no reasonable suggestion for
combining the teachings of the references relied upon by the examiner in a manner
which would have led one of ordinary skill in this art to arrive at the claimed
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