Appeal No. 1999-1510
Application No. 08/447,997
teachings of the references.’” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d
1780, 1783 (Fed. Cir. 1992) (citations omitted).
An adequate showing of motivation to combine requires “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.’” Ecolochem, Inc. v.
Southern Calif. Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed.
Cir. 2000) (quoting In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456
(Fed. Cir. 1998)). See also In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000):
[I]dentification 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.
Thus, in this case, the references will support a prima facie case of
obviousness only if their disclosures would have led a person of ordinary skill in
the art to combine the Mx-1 promoter with a proliferation-promoting gene. After
reviewing cited references and the arguments of the examiner and Appellants,
we agree with Appellants that the examiner has not made out a prima facie case.
The examiner argues that those skilled in the art would have been led to
combine the Mx-1 promoter with the SV40 large T antigen gene by Robinson’s
disclosure that the same gene had previously been cloned under the control of a
different promoter that was regulated by interferon. Examiner’s Answer, page 5.
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