Appeal No. 2006-0102 Page 18
Application No. 09/732,439
not find, and the examiner has not identified a disclosure in Rayapati, of a
transformed monocot plant. Therefore, while the examiner may assert (Answer,
page 14), “[m]ethods for transforming monocots such as maize via
electroporation or biolistics were well-known in the art at the time of [a]ppellants’
invention, namely August 1993,” there is no evidence on this record to support
this assertion.
Nevertheless, the examiner concludes (Answer, page 14),
it would have been prima facie obvious to one of ordinary skill in the
art at the time the invention was made to transform a plant with a
recombinant DNA encoding both a proline biosynthetic enzyme and
a chloroplast transit peptide, give [sic] the express purpose of
making a transgenic drought-resistant plant. . . .
We disagree.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only
by the prior art references and the then-accepted wisdom in the
field. . . . Close adherence to this methodology is especially
important in cases where the very ease with which the invention
can be understood may prompt one “to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.”
. . .
Most if not all inventions arise from a combination of old elements.
. . .Thus, every element of a claimed invention may often be found
in the prior art. . . . However, identification in the prior art of each
individual part claimed is insufficient to defeat patentability of the
whole claimed invention. . . . Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art,
there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by
the applicant. [Citations omitted].
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