Appeal No. 1997-3511
Application No. 08/233,663
regarded as equivalent in this manner in the absence of a teaching to be found in the prior
art or sound scientific reasoning which would support this position.
For appellants’ part we would note initially, as the examiner did through out the
Examiner’s Answer, that the claims are not directed to a method of lyophilizing a
composition or to a lyophilized composition. Appellants acknowledge at page 10 of the
Appeal Brief that the claimed composition is “inherently” stable to both lyophilization and
prolonged storage in the freeze-dried state. Thus, any compositions containing these
ingredients which are established by the examiner as old or obvious would also be
expected to inherently be stable to lyophilization. As correctly pointed out by the examiner
the motivation to combine the ingredients of the presently claimed composition need not
be the same as that which motivated appellants to make the combination. See In re
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
Similarly, arguments to the affect that “[r]elevant disclosures are only those relating
to factor IX formulations that protect factor IX from stresses associated with lyophilization
and that provide factor IX stability in a freeze-dried state (in the presence of little water)”
(Brief, page 11) would inappropriately limit the scope of review of the prior art on the part
of the examiner.
SUMMARY
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