Appeal No. 1999-1425
Application No. 08/393,321
experimentation to optimize the disruption of the cells while not damaging the plasmids to
be isolated, the examiner has provided no evidence or facts which would guide those of
ordinary skill in this optimization process. Before one can optimize a process, there must
first be the process. We do not doubt, that the mechanical disruption of Sauer could be
applied in some manner to cells to isolate intact plasmids. However, the fact that the prior
art could be so modified would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). In re Fritch, 972 F.2d 1260, 1266, n.14, 23 USPQ2d
1780, 1783-84, n.14 (Fed. Cir. 1982).
In the absence of such evidence, the only suggestion to perform the assay in the
manner presently claimed, is provided by appellant's disclosure of the invention. However,
use of this information as a basis for establishing a prima facie case of obviousness,
within the meaning of 35 U.S.C. § 103, would constitute impermissible hindsight. There
must be some reason, suggestion, or motivation found in the prior art whereby a person of
ordinary skill in the field of the invention would make the modifications required. That
knowledge can not come from the applicants' invention itself. Diversitech Corp. v. Century
Steps, Inc., 850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger,
815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp.
v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). Since that reason,
suggestion or motivation is missing from this record, we can not agree that the examiner
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