Appeal No. 2001-2500
Application No. 08/590,729
tRNAs was structurally and functionally similar to initiator fMet-tRNAf. Id. He
concluded that
[i]t would have been obvious to one of ordinary skill in the art at the
time of the invention to synthesize fluorescently labeled proteins,
like that of Hildenbrand et al., using the bacterial cell-free coupled
transcription/translation system of Kudlicki et al., by substituting
fMet-tRNAf linked to coumarin at the a -amino group of fMet in place
of the fluorescent lysyl- and alanyl-tRNAs of Picking et al., with the
expectation of producing proteins singly and uniquely labeled at the
N-terminal residue. Motivation to produce N-terminal methionine
labeled proteins is provided by their utility, as taught by Picking et
al., in allowing the characterization of the environment around
nascent proteins as they exit ribosomes during translation.
Id., page 6.
“It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been 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). An adequate showing of motivation to combine
requires “evidence that ‘a skilled artisan, confronted with the same problems as
the inventor and with no knowledge of the claimed invention, would select the
elements from the cited prior art references for combination in the manner
claimed.’” Ecolochem, Inc. v. Southern Calif. Edison Co., 227 F.3d 1361, 1375,
56 USPQ2d 1065, 1075 (Fed. Cir. 2000) (quoting In re Rouffet, 149 F.3d 1350,
1357, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998)).
Thus, the method of claims 2-4 would have been prima facie obvious only
if the prior art would have led a person of ordinary skill in the art to select, from all
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