Ex Parte Schneck et al - Page 12

                Appeal 2007-1161                                                                                 
                Application 09/954,166                                                                           
                the soluble MHC to a immunoglobulin scaffold would have prompted one of                          
                ordinary skill in the art to have applied the same approach to TCR in order to                   
                improve its binding affinity.3                                                                   
                       Appellants dismiss this rationale, arguing that that Matsui “solves the                   
                problem” (Br. 14).  However, as they acknowledge (Br. 14), Matsui did not                        
                remedy the low affinity of heterodimeric TCRs; they worked around it by                          
                utilizing a technique that facilitated the measurement of low-affinity TCR                       
                binding (Matsui, p. 12862, col. 2; Findings of Fact 6).  Precise teachings                       
                directed to the specific subject matter of a claim are not required to reach a                   
                conclusion of obviousness. KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396.                           
                “[T]he teaching, motivation, or suggestion may be implicit from the prior art                    
                as a whole, rather than expressly stated in the references. . . . The test for an                
                implicit showing is what the combined teachings, knowledge of one of                             
                ordinary skill in the art, and the nature of the problem to be solved as a                       
                whole would have suggested to those of ordinary skill in the art.” In re                         
                Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).  In                          
                this case, the TCR binding problem identified in Matsui, and acknowledged                        
                in the Specification, would have led one of ordinary skill in the art to have                    
                applied Dal Porto’s teachings to solve it.                                                       
                       Appellants argue that Harris teaches away from complete antibodies                        
                because “the effector functions intrinsic to the complete antibodies . . . have                  
                led to undesirable interactions” (Harris, p. 1-2; Br. 11-12).  We do not find                    
                                                                                                                
                3 Consistent with the Examiner’s reasoning that there was motivation to                          
                improve the affinity of soluble TCR for peptide/MHC complexes,                                   
                Appellants state in the Specification that “to specifically regulate immune                      
                responses, soluble molecules with high affinities/avidities for . . .                            
                peptide/MHC complexes are needed” (Specification 7-8).                                           
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