Appeal No. 2001-0692 Page 11
Application No. 09/163,572
Cir. 1992). “[I]dentification in the prior art of each individual part claimed is
insufficient to defeat patentability of the whole claimed invention. Rather, to
establish obviousness based on a combination of the elements disclosed in the
prior art, there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by the applicant.”
In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000).
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). “Combining prior art references without evidence of such a
suggestion, teaching, or motivation simply takes the inventor’s disclosure as a
blueprint for piecing together the prior art to defeat patentability—the essence of
hindsight.” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
In this case, we agree with Appellants that the examiner has not shown
that those skilled in the art would have been motivated to combine the teachings
of the cited references. The assay disclosed by Evans involves hybridization of
mixed probes with immobilized cosmid DNA to determine which cosmids share
overlapping sequences. See page 5030 (abstract). The assay disclosed by
Pomponi involved inhibition of the transfer of labeled cholesteryl ester from high
density lipoproteins to low density lipoproteins to identify compounds of potential
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