Appeal No. 2002-1355 Page 9
Application No. 08/907,783
The examiner has not adequately explained what would have led those
skilled in the art to replace the prior art’s antigen-presenting cells with cells that
were known to be incapable of functioning as antigen-presenting cells. The
examiner’s response to Appellant’s argument on this point, as we understand it,
is that the assay resulting from the combined references would not be inoperable
because the sample of human blood used in the assay would contain
macrophages, which could function as antigen-presenting cells. See the
Examiner’s Answer, pages 24-25.
This response is inadequate. The examiner has not rejected the claims
under 35 U.S.C. § 101 or otherwise disputed that the assay defined by the claims
would be operable. The issue is whether those of skill in the art would have
expected that the assay resulting from the combined references would have
been operable. If not, there would have been no reason to combine those
teachings. The examiner states that “one of ordinary skill in the art at the time
the invention was made would have been motivated to use the immortalized B
cell line (T2) . . . in order to present antigen (Borrelia burgdorferi antigen) that is
present in very low concentrations, as taught by Goronzy.” The evidence of
record does not support this rationale. The rejection is therefore reversed.
Summary
The disclosures of Yokozeki, Goronzy, Schwartz, and the ATCC catalog
would not have made the method of claim 1 prima facie obvious to those of
ordinary skill in the art. All of the examiner’s other rejections also depend on this
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