Appeal No. 2006-2493 Page 10
Application No. 10/126,122
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). For the
foregoing reasons, we find that the examiner failed to provide the evidence
necessary to demonstrate that the prior art, when viewed as a whole, suggests
the desirability, and thus the obviousness of making the prior art combinations.
Accordingly, we reverse the rejection of claims 1-7, 9 and 10 under
35 U.S.C. § 103 as being unpatentable over the combination of Hsieh, Jindal,
and Carell.
The combination of van Breeman and Carell:
Claims 1, 2, 5, 6, 8, 9 and 11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of van Breeman and Carell.
According to the examiner (Answer, page 7), van Breeman “teaches
identification of members of a library which are ligands for an enzyme
wherein the enzyme and library members are allowed to associate in
solution in an ultrafiltration chamber. . . .” In this regard, the examiner
finds (id.), according to van Breeman’s method “on one side of an
ultrafiltration/size exclusion membrane, unbound library members are
washed away (though the membrane), and bound members are
dissociated from the enzyme and identified by mass spectrometry . . . .” In
addition, the examiner finds (id.), van Breeman “teaches that ligand may
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