Appeal No. 1997-2319
Application No. 08/147,707
McClanahan’s suggestion to be compelling enough to give one skilled in the art reason
to replace Terstappen’s reliable marker with one of less certain significance.
In our view, the references, at best, make it obvious to try to identify and/or
isolate cells committed to the lymphoid-lineage by “including as the third antibody . . .
IL-7R-specific mAbs . . . in place of any of the third antibodies employed by
Terstappen,” as proposed by the examiner. Nevertheless, it is well settled that “obvious
to try” is not the standard under 35 U.S.C. § 103. See In re O’Farrell, 853 F.2d 894,
903, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988). We find that the examiner’s burden of
establishing a prima facie case of obviousness has not been met. Accordingly, the
rejection of the claims under 35 U.S.C. § 103 is reversed.2
OTHER ISSUES
We have reversed the examiner’s rejection of claims 1 through 3, 5 through 8, 10
and 11 under 35 U.S.C. § 103, nevertheless, it is not clear from the record whether
claim 11 was evaluated under the appropriate legal standards. Claim 11 is a product by
process claim directed to “[a]n isolated population of human progenitor cells prepared
according to the method of claim 6.” It is well settled that “even though product-by-
process claims are limited by and defined by the process, determination of patentability
is based on the product itself.” That is, “[t]he patentability of a product does not depend
2 We emphasize that our deliberations extend only to the elected species of the
claimed invention; we take no position on the relevance of the cited references to any
other embodiment of the invention.
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