Appeal No. 2002-0795
Application No. 09/128,036
findings, the examiner concludes that it would have been prima
facie obvious to one of ordinary skill in the art to make a
library of compounds as disclosed by Cody, modified by the
teaching of Smith concerning the use of mixtures of reagents
(id.). The examiner states that the motivation for making the
proposed modification is the teaching in Smith that the use of
mixtures of reactants “can provide simplicity to the reactions
and workup (see page 2822, top).” Id. We disagree.
When determining the patentability of a claimed invention
which comprises two known elements, it is incumbent upon the
examiner to present evidence that there is something in the prior
art as a whole to suggest the desirability, and thus the
obviousness, of making the combination. See In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999); Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984). “[A] reference
that teaches away is a significant factor to be considered in
determining unobviousness.” In re Gurley, 27 F.3d 551, 553, 31
USPQ2d 1130, 1132 (Fed. Cir. 1994). In this rejection on appeal,
we determine that the examiner has not presented convincing
evidence of a motivation, reason or suggestion to combine the
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