Appeal No. 2001-1957 Page 4
Application No. 08/479,849
(Brief, page 13), “[t]he secondary references only suggest that certain specific
peptide bonds may be considered metastable peptide bonds, but they do not
teach or suggest how one might design an analog that mimics metastable
peptide bond hydrolysis to enhance native metastable peptide bond
modification.”
We recognize the examiner’s reliance on In re Winslow, 365 F.2d 1017,
151 USPQ 48 (CCPA 1966), arguing (Answer, page 6) “that the inventor with all
the prior art around him would have arrived at the instant claimed invention….”
However, we remind the examiner that 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). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007