Appeal No. 2006-0258 Page 17
Application No. 09/755,747
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].
In other words, “there still must be evidence that ‘a skilled artisan, . . . 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 California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000). At best, the statement of the rejection establishes that
individual parts of the claimed invention were known in the prior art. The
examiner, however, has not established that a person of ordinary skill in the art
would recognize a fluorescent dye could be used in the method taught by
Stimpson, while steadily and progressively adjusting the temperature at a rate of
between -.-1 to 1 C per second and continually measuring an output signal
indicative of interaction of the dye with duplex formed. . .” as is required by
appellant’s claimed invention.
On reflection, we find that the examiner has not met his burden of
establishing a prima facie case of obviousness. Accordingly, we reverse the
rejection of claims 1-5, 8, 10-18, 21, 23-31, 34, 36-44, 47, 49-52, 67-71, 73, 74,
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