Appeal No. 2002-0019 Page 5
Application No. 08/517,949
Southern California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000). On this record, the examiner did not provide the factual
evidence necessary to establish that absent appellants’ disclosure, a person of
ordinary skill in the art would have combined the elements from the cited prior art
in a manner that would have resulted in appellants’ claimed invention.
There can be no doubt that the examiner has identified individual parts
(a derivatized TCA molecule (Collins), and “linking groups” (Buechler)) of the
clamed invention in the prior art relied upon. What is missing, however, is a
reason to modify the derivatized TCA molecule taught by Collins, by substituting
Collins’ “linking groups” with those of Buechler. Prima facie obviousness based
on a combination of references requires that the prior art provide “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).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available, however,
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
According to the examiner (Answer, page 5), “[t]he prior art references are
appropriately combined because all are concerned with the use of derivatized
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