Appeal No. 1997-3511
Application No. 08/233,663
the claimed invention, would have selected these components for combination in the
manner claimed.” There must be some reason, suggestion, or motivation found in the prior
art whereby a person of ordinary skill in the field of the invention would make the
modifications required. That knowledge can not come from the applicants' invention itself.
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318
(Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551
(Fed. Cir. 1985). We leave it to the examiner, in the first instance, to determine whether
the prior art would have reasonably suggested bringing the components of the presently
claimed composition together.
In this regard, we would note that appellants urge that (Brief, page 13):
immunoglobulin and factor VIII, are chemically/structurally distinguishable
from Appellants’ factor IX. Such generic disclosures are not relevant, must
less predictive, of effectively stabilizing compositions for lyophilization of
factor IX and provide no reasonable expectation of success. [Emphasis in
the original].
In rebuttal, the examiner appears to assume that, since the primary reference relates to
factor IX, it is sufficient for purposes of establishing a prima facie case that Wang and
Zolton generically relate to proteins, including plasma proteins. (Answer, page 9).
However, it is not readily apparent, from the present record, that all such proteins should be
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007