Appeal 2007-2400
Application 10/418,182
understandings and knowledge reflected in the prior art, and motivated by
the general problem facing the inventor, would have been led to make the
combination recited in the claims.” In re Kahn, 441 F. 3d 977, 988 (Fed.
Cir. 2006). See also KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741
(2007) (The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”);
Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1367 (Fed. Cir. 2006) (The “suggestion test is in actuality quite
flexible and not only permits, but requires, consideration of common
knowledge and common sense.”).
Here, the library defined by claim 1 represents the product of taking
the process disclosed by Crea to its logical conclusion by carrying out walk-
through mutagenesis of an immunoglobulin’s CDRs individually and in all
possible combinations. The nature of the problem addressed by Crea would
have suggested to the skilled artisan that the more complete the library of
walk-through mutants, the more useful it would be as a research tool. We
agree with the Examiner that a person of ordinary skill in the art would have
considered it obvious, based on Crea’s teachings, to make such a library.
The rejection of claims 1-9 under 35 U.S.C. § 103 based on Crea is affirmed.
SUMMARY
We reverse the rejection for obviousness-type double patenting based
on U.S. Patent 6,649,340 and the rejection under 35 U.S.C. § 103 based on
Roberts. However, we affirm the provisional rejection for obviousness-type
double patenting and the rejection under 35 U.S.C. § 103 based on Crea.
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