Appeal No. 2001-2011 Page 4
Application No. 08/402,413
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. [citations omitted]
What is lacking in the examiner’s treatment of the claims on appeal is a reason,
suggestion or motivation, stemming from the prior art, which would have led a person
having ordinary skill to the claimed method. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). On this
record, the only reason or suggestion to modify the references to arrive at the present
invention comes from appellants’ specification, and we are constrained to reverse the
examiner’s rejection of claims 1 through 3 under 35 U.S.C. § 103.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
William F. Smith ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
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)
Toni R. Scheiner )
Administrative Patent Judge )
Eli Lilly and Company
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