Appeal No. 2003-0338 Page 5
Application No. 08/486,451
species of composition that falls within the genus obvious. See In re Jones, 958
F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992); In re Baird, 16 F.3d
380, 382-83, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994).
With respect to claim 24, the rejection does not even discuss the
limitations of that claim.
We note that the rejection shot-gunned all of the claims, without
addressing the claims individually. For example, the rejection relies on Manning
for the addition of a polyol, but a polyol is not required by independent claim 21.
A claim-by-claim analysis focuses the analysis and allows for more meaningful
review. Because the rejection has failed to set forth a prima facie case of
obviousness, it is reversed.
Claims 21, 22, 24 and 26-37 also stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Igari I and Igari II.
Again, due to its brevity, the entire rejection is set forth below.
Igari [I] teach[es] that thrombopoietin is stabilized by adding
to the formulation; buffers, isotonizing agents and adsorption
inhibitors such as Tween 80. The patent does not teach the
particular buffers claimed by the patent. Although the amino acid
glycine is taught as a pH adjusting agent, histidine is not disclosed.
Igari [II] disclose[s] that pH adjusting agents that can be
used with thrombopoietin are glycine and histidine. Moreover they
teach the addition of salts such as acetate and citrate known in the
art as buffers. It would have been obvious to one of ordinary skill in
the art at the time the invention was made to recognize that glycine
and histidine are functional equivalents as taught by [Igari II] and to
substitute one for the other and employ histidine. It would have
been obvious to employ other buffers well known in the art such as
those claimed herein, particularly when the secondary reference
discloses the use of these with TPO.
Paper No. 9, pages 3-4 (citations omitted).
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