Appeal No. 2001-1498 Page 8
Application No. 08/912,378
confers drug resistance to bacteria; wherein the EGS comprises as [sic] least
one modified nucleotide; or an EGS that cleaves an RA molecule required for
viability of the cell.”
To make up for the deficiencies in Gibbs or Ortigao, the examiner relies
on Yuan, Kobayashi and Winnacker. According to the examiner (Answer, page
14), “[o]ne of ordinary skill in the art would have been motivated to make such a
composition comprising EGS that target drug resistance in order to render drug-
resistant bacteria in hospitals susceptible to killing….” Stated differently, the
examiner reason combining the prior art is to have a composition for delivering a
nucleic acid to a bacterial cell. The combination of references however, fails to
suggest or even attempt to deliver a conjugate of porphyrin and nucleic acid to a
bacterial cell. Prima facie obviousness based on a combination of references
requires that the prior art provide “a reason, suggestion, or motivation to lead an
inventor to combine those references.” Pro-Mold and Tool Co. v. Great Lakes
Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . 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). Therefore, it is our opinion, the combination of references
relied upon by the examiner fails to suggest or provide a reasonable expectation
of success in carrying out the claimed invention. Accordingly, we reverse the
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