Appeal No. 2001-0766 Page 5
Application No. 08/483,941
gene in order to select those cells expressing the HSV1-TK
gene (i.e., the negatively selectable gene).
We disagree with that line of reasoning and, accordingly, reverse all of the
appealed ' 103 rejections.
In proceedings before the PTO, the examiner bears the burden of
establishing a prima facie case of obviousness based upon the prior art. The
examiner can satisfy this burden Aonly by showing some objective teaching in the
prior art or that knowledge generally available to one of ordinary skill in the art
would lead that individual to combine the relevant teachings of the references.@
In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992)(footnote omitted). 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 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. (Citations
omitted.)
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