Appeal No. 1995-4273
Application No. 08/046,364
Appellant argues that the references teach nothing more than conjugates
comprising polymers coupled to intact anti-CD3 antibodies. In responding to these
arguments, the examiner does not dispute this. Instead, for a number of reasons set forth
on pages 15 through 17 of the Answer, the examiner maintains that “a person of ordinary
skill in the art would realize that the Fc region is only required when non-bound antibodies
are used in the in vivo system” and that person would also “have known that any argument
regarding Fc is a non-issue, and is textbook knowledge.”
Our determination of the patentability of the claims is hampered by the examiner’s
failure to specifically acknowledge or address this limitation in the statement of the
rejection. We have no doubt that the prior art could be modified in a manner consistent
with appellant’s specification and claims. That the prior art could be so modified, however,
would not have made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). What is lacking from the examiner’s treatment of
the claims on appeal is a reason, suggestion or motivation, stemming from the prior art,
which would have led a person having ordinary skill to the claimed method. Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed.
Cir. 1996). In our judgment, the only reason or suggestion to modify the references to
arrive at the present invention comes from appellant’s specification.
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