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
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007