Appeal No. 2005-0394 Page 4
Application No. 08/940,692
one of ordinary skill in the art would have reasonably expected to be able to
obtain cells within the scope of the claims”, specifically, cells having a specific
growth rate on glucose as a sole carbon source of at least 0.4h-1.
What is unclear from the examiner’s reasoning is where the prior art
provides a suggestion to, screen cells for a fast growth rate on glucose, or more
specifically to screen cells to obtain a growth rate of at least 0.4 h-1 as required
by appellants’ claimed invention. In this regard, we remind the examiner that
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).
As appellants point out (Brief, pages 9-13) there is nothing in the
combination of references relied upon to suggest screening cells for the specific
growth rate of 0.4 h-1. Furthermore, we agree with appellants’ argument (Brief,
page 10),
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