Appeal No. 2003-0903 Page 6
Application No. 09/534,366
content in the case of the 11mers was preferred . . .” Fislage
further motivates the use of these primers in differential display by
noting “We have developed a primer set for a prokaryotic
differential display of mRNA in the Enterobacteriaceae group . . . “
Examiner’s Answer, pages 6-7.
Appellants argue, in a nutshell, that the cited references do not suggest
the specific combinations of primers that are recited in the claims. See the
Appeal Brief, pages 11-15. Thus, Appellants assert that the rejection is based on
improper hindsight and should be reversed.
“The PTO has the burden under section 103 to establish a prima facie
case of obviousness. It can satisfy this burden only by showing some objective
teaching in the prior art or that knowledge generally available to one of ordinary
skill in the art would lead that individual to combine the relevant teachings of the
references.” In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988) (citations omitted). 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)
In this case, we agree with Appellants that the examiner has not
adequately explained how the references would have suggested the particular
combination of primers recited in the claims. As Appellants point out, even
though Fislage discloses all of the primers recited in the claims, the primers are
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