Appeal No. 2001-1051 Page 4
Application No. 08/185,079
Appeal Brief, page 5 (emphasis in original). Appellants conclude that
Vonderfecht does not motivate the ordinary artisan to use the presently claimed
compounds for combating a retroviral infection, such as an HIV infection. We
agree.
The burden is on the examiner to make a prima facie case of
obviousness, and the examiner may meet this burden by demonstrating that the
prior art would lead the ordinary artisan to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). Obviousness is determined in
view of the sum of all of the relevant teachings in the art, not isolated teachings
in the art. See In re Kuderna, 426 F.2d 385, 389, 165 USPQ 575, 578
(CCPA 1970); see also In re Shuman, 361 F.2d 1008, 1012, 150 USPQ 54,
57 (CCPA 1966). In assessing the teachings of the prior art references, the
examiner should also consider those disclosures that may teach away from the
invention. See In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365
(Fed. Cir. 1997).
In this case, each of the Tidwell references teaches that “[t]he suppressive
effect [of the compound taught by Tidwell] is virus specific, however, and does
not extend to cell fusion induced by P-3 virus or the MP mutant of herpes
simplex type I.” Tidwell I, Col. 2, ll. 64-67; Tidwell II, Cols. 2-3, ll. 66-1; Tidwell III,
Col. 3, ll. 1-4. Thus, Tidwell expressly teaches away from using the compounds
on viruses other than RSV. The examiner relies on Col. 11, lines 43-45, of
Tidwell III, finding that the teaching at Col. 11 renders the above teaching moot.
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007