Appeal No. 1999-1774
Application No. 08/487,183
established by combining the teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting the combination.’ . . .
[T]he same inquiry must be carried out in the context of a purported obvious
‘modification’ of the prior art.” In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783 (Fed. Cir. 1992) (citation omitted).
Evidence of motivation to combine may be derived from a variety of
sources. “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) (citations omitted). As relevant here, “[t]he prior art must provide one
of ordinary skill in the art the motivation to make the proposed molecular
modifications needed to arrive at the claimed compound.” In re Lalu, 747 F.2d
703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984).
A classic “obvious to try” situation is one in which the prior art would have
made it obvious to “try each of numerous possible choices until one possibly
arrived at a successful result, [but] the prior art gave either no indication of which
parameters were critical or no direction as to which of many possible choices is
likely to be successful.” In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988).
Such is the case here. The cited references disclose that specific
substitutions of specific amino acid residues of P. plagiophthalamus luciferase
change the color of the light produced by the enzyme. The references do not
suggest, however, that other substitutions at those positions would also affect the
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