Appeal No. 2004-0275
Application No. 09/09/318,186
presentation of evidence that is pertinent. In re Dillon, 919 F.2d 688, 692-93, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc), cert. denied, 500 U.S. 904
(1991).
Appellants argue that the instant claims are not obvious under 35 U.S.C.
§103 in view of the cited references. Brief, page 12. Appellants argue that, “one
of ordinary skill in the art would not look to bits and pieces of the secondary
references in that manner suggested if the references are considered as a
whole.” Brief, page 6. Appellants point out that Welch does not describe
synthesizing chiral selectors on a polymeric synthesis resin, Liu does not
describe synthesizing chiral selectors on a resin, and Weingarten fails to disclose
forming a parallel library. Brief, pages 5-9.
These attempts to rebut the examiner's prima facie case of obviousness
are unpersuasive. Obviousness can be established by combining or modifying
the teachings of the prior art to produce the claimed invention where there is
some teaching, suggestion, or motivation to do so found either in the references
themselves or in the knowledge generally available to one of ordinary skill in the
art. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988), In
re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992).
We agree with the examiner that the prior art references provide the
necessary reason, suggestion or motivation to make the claimed invention and
we are not persuaded by appellants’ arguments to the contrary. Appellants
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