Appeal No. 2001-1907 Page 11
Application No. 08/694,315
The examiner’s finding that McMichael teaches that positive therapeutic
results occur when the histamine and the immunoglobulin are administered
together but not when administered individually actually teaches away from the
combination, as the ordinary artisan would read that to mean that the
immunogen, in order to obtain a positive therapeutic effect, should be
administered with the histamine, and not as teaching that the histamine could be
disposed of altogether. Finally, the examiner’s assertion that one of ordinary skill
would have been motivated to remove histamine because the histamine
activated immunoglobulin with histamine removed would have fewer undesirable
side effects is not supported by the prior art of record, but appears to be a
conclusory statement, and such statements do not provide sufficient motivation
to support the combination. See In re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d
1430,1433-34 (Fed. Cir. 2002) (in reviewing an obviousness rejection, the court
noted that “conclusory statements” as to teaching, suggestion or motivation to
arrive at the claimed invention “do not adequately address the issue.”).
As neither the rejection under 35 U.S.C. § 103(a) over the combination of
Yoshii I, Yoshii II, Naiki, Getlik, Takashi, McMichael and Wood, nor the
obviousness-type double patenting rejection over the combination of claims 1-11
of U.S. Patent No. 5,780,026, McMichael and Wood set forth an adequate
teachings, suggestions or motivations to combine the references, both rejections
are reversed.
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