Appeal No. 2000-0441 Page 5
Application No. 08/866,942
who illustrate that primary cells undergo homologous recombination, [renders] the
claimed invention obvious for reasons made of record in the previous office action.”
Answer, page 4. Turning to the previous office action for the reasons, we find only the
assertion that “[t]he ordinary artisan would have been motivated to apply the teachings
of Foulkes [ ] and Wadsworth [ ] to generate reporter knock-in transgenic mice from
which cells are isolated to screen for modulators of gene expression.” Paper No. 7,
page 5.
Clearly, the examiner has established that individual parts of the claimed
invention were known in the prior art. However, as explained in In re Kotzab, 217 F.3d
1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citations omitted):
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 “to 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.
“It is impermissible to use the claimed invention as an instruction manual or ‘template’
to piece together the teachings of the prior art so that the claimed invention is rendered
obvious.” In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992),
citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). The
examiner may establish a case of prima facie obviousness based on a combination of
references “only by showing some objective teaching in the prior art or that knowledge
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