Appeal No. 1997-3542
Application No. 08/192,507
1984). Our reviewing court in In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1331
(Fed. Cir. 1994) stated:
A reference may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set out in
the reference, or would be led in a direction divergent from the path that was taken
by the applicant.
In the present case, Julius would appear to teach one of ordinary skill in the art away from
using the anti-mouse IgM monoclonal antibodies of Julius to destroy B cells as Julius
suggests that such antibodies be used to induce DNA synthesis in B-cells.
Appellants submit that Lambert does not teach or suggest that one could target B-
cells for destruction using IgM as the target cell surface antigen. Brief, page 10.
Appellants also argue “that there is no teaching, suggestion or incentive in the cited
references which would motivate one with ordinary skill in the art to use an immunotoxin to
kill IgM bearing normal B-cells” and that the examiner has not indicated such motivation.
Brief, page 11. We agree.
Furthermore, it is well settled that in making obvious determinations, one must look
to the problem solved by the inventors in relation to those solved by the prior art. When
comparing the differences between the structure and properties taught in the prior art and
those of the applicants' invention, there is a need to include consideration of the problems
solved by the inventor. See In re Wright, 848 F.2d 1216, 6 USPQ2d 1959 (Fed. Cir.
1988).
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