Ex parte ARUFFO et al. - Page 7

          Appeal No. 94-1696                                                          
          Application 07/811,129                                                      

          argument that undirected skill in the art of one in the pertinent           
          art is an adequate substitute for statutory skill in the art”).             
               It is well established that the examiner has the initial               
          burden of establishing that the teachings of the applied prior              
          art would have suggested the claimed invention to one of ordinary           
          skill in the art and that such person would have had a reasonable           
          expectation of success.  In re O’Farrell, 853 F.2d 894, 904, 7              
          USPQ2d 1673, 1681 (Fed. Cir. 1988).  However, this suggestion               
          must be in the prior art and not in the appellants’ disclosure.             
          In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531              
          (Fed. Cir. 1988).  In the case before us, we do not find any                
          teaching or suggestion in the applied prior art as to why one of            
          ordinary skill would have combined Springer and Zettlmeissl to              
          arrive at the invention described in claim 1.  Nor do we find               
          that any such teachings have been pointed out by the examiner.              
          Rather, the only source we find for the examiner’s reasoning is             
          the appellants’ own disclosure.  See, for example, p. 4 of the              
          specification which states that “[t]he fusion molecules of the              
          present invention can be utilized as costimulatory agents for the           
          activation of T cells and in methods for increasing ... the                 
          induction of IL-2 by T cells.”  Thus, since, on this record, the            
          only reason given for combining the prior art of record comes               


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