Appeal No. 2001-2027 Page 4
Application No. 09/059,573
to us that Ishizaka=s measurement of ATP necessarily, if indirectly, detects the
activation event that precedes proliferation.
Nevertheless, the examiner=s statement of rejection, on its face, is inadequate to
establish a prima facie case of obviousness. ATo prevent the use of hindsight based on
the invention . . . the examiner must show reasons that the skilled artisan . . . with no
knowledge of the claimed invention, would select the elements from the cited prior art
references for combination in the manner claimed.@ In re Rouffet, 149 F.3d 1350, 47
USPQ2d 1453, 1457-58 (Fed. Cir. 1998). This the examiner has not done. That is, the
examiner=s statement of rejection is entirely conclusory, providing no reasons at all for
combining Ishizaka and Melnicoff, much less explaining why one skilled in the art would
have selected particular elements from each reference and arranged them in the order
required by claims.
Nor are we persuaded by the examiner=s belated statement, in response to
appellant=s arguments in the Brief, that A[o]ne of ordinary skill . . . would have been
motivated to separate a specific subset of lymphocytes after incubation in order to be
able to assay whole blood and to determine whether or not a particular subset of
lymphocytes was activated by the mitogen or antigen.@ Examiner=s Answer, page 8.
The examiner=s reliance on motivation is misplaced here. It is not enough to assert that
one skilled in the art would have been motivated to achieve that which the invention
achieves. Again, the examiner must explain why one would have been motivated to
select particular elements from particular references and combine them in precisely the
manner claimed.
Finally, it is irrelevant whether A[i]t would have been expected, barring evidence
to the contrary, that combining the teachings of [Ishizaka and Melnicoff] would result in
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