Appeal No. 1999-2634
Application No. 08/108,606
viewpoint of a person of ordinary skill in the art in finding relevant facts, assessing the
significance of prior art, and making the ultimate determination of the obviousness
issue. Failure to do so is not consistent with either effective administrative procedure or
effective judicial review, examiners cannot rely on conclusory statements when dealing
with particular combinations of prior art and specific claims, but must set forth the
rationale on which they rely. See In re Lee, 277 F.3d 1338, 1343-1344, 61 USPQ2d
1430, 1433-1434 (Fed. Cir. 2002). Thus, it is improper to rely on the Acommon
knowledge and common sense@ of a person of ordinary skill in art to find an invention
obvious over a combination of prior art references, since the factual question of
motivation to select and combine references is material to patentability, and cannot be
resolved on subjective belief and unknown authority. In re Lee, 277 F.3d 1338, 1343-
1344, 61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). Therefore, while not
commenting on whether one of ordinary skill in the art would have found it obvious to
further incubate the Aformalin-treated bacterial strain at 4EC for between about 24 hours
and about 48 hours, thereby obtaining a formalin-killed E. coli bacterial strain,@ we are
constrained to find the examiner has failed to establish a prima facie case of
obviousness for failing to provide evidence of this fact.
The rejection of claim 7, its dependent claims 8-11,16 and independent claim 17,
including the same process step, is reversed.
Claims 13 and 15
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