Appeal No. 2003-0847 Page 12
Application No. 08/744,685
(Fed. Cir. 1996). With respect to an obviousness rejection based on a
combination of references, as the court has stated, “virtually all [inventions] are
combinations of old elements.” Environmental Designs, Ltd. V. Union Oil Co.,
713 693, 698, 218 USPQ 865, 870 (Fed. Cir. 1983); see also Richdel, Inc. v.
Sunspool Corp., 714 F.2d 1573, 1579-80, 219 U.S.P.Q. (BNA) 8, 12
(Fed. Cir. 1983) (“Most, if not all, inventions are combinations and mostly of old
elements.”). Therefore, an examiner may often find every element of a claimed
invention in the prior art. If identification of each claimed element in the prior art
were sufficient to negate patentability, very few patents would ever issue. The
United States Court of Appeals for the Federal Circuit, our reviewing court,
however, has stated that “the best defense against hindsight-based obviousness
analysis is the rigorous application of the requirement for a showing of a teaching
or motivation to combine the prior art references.” Ecolochem, Inc. v. Southern
California Edison Co., 227 F.3d 1361, 1371, 56 USPQ2d 1065, 1073 (Fed. Cir.
2000).
The rejection fails to show that one of ordinary skill in the art would have
been motivated to target the gamma 2A locus as a site for homologous
recombination. Fell A and B teach the expression of recombinant genes by
homologous recombination. Yamawaki-Kataoka discloses the complete
nucleotide sequence of the murine gamma 2A locus. We can find no teaching or
suggestion in those references, nor does the examiner point to one, that would
lead one of ordinary skill to target the gamma 2A locus as the site for the
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