Appeal No. 1999-1355 Page 10
Application No. 08/469,786
. . . It is also known in the art that linkage of the polynucleic acid segment
encoding the non-Ig protein moiety to the 5' end of the genetic construct
encoding the variable segment . . . would have been expected to interfere
with the antigen binding site . . .
The examiner concludes that “no one of ordinary skill in the art having the references
would have put the identification peptide where appellant asserts especially where the
combined references are directed to producing and disclosure of bifunctional
antibodies.” Answer, page 24. This presupposes that one would have had a reason to
modify Hopp (or Neuberger or Cabilly) in the first place - something the examiner has
not established.
“It is impermissible to use the claimed invention as an instruction manual or
‘template’ to piece together the teachings of the prior art so that the claimed invention is
rendered obvious.” In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed.
Cir. 1992), citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991). The examiner may establish a case of prima facie obviousness based on a
combination of references “only 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.” Id., 972 F.2d 1260,
1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
On this record, the only reason or suggestion to combine the references in the
manner claimed comes from appellant’s specification. Accordingly, the rejection of
claims 35-47 under 35 U.S.C. § 103 is reversed.
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