Appeal No. 1996-0927
Application 07/888,203
are described as being genetically engineered.
To establish a prima facie case of obviousness, there must be some reason,
suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field
of the invention would make the substitutions required. That knowledge can not come
from the applicant's invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675,
678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). The extent to which such suggestion
must be explicit in or may be fairly inferred from the references, is decided on the facts of
each case, in light of the prior art and its relationship to the invention. In re Gorman, 933
F.2d 983, 986-987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Here, the examiner has not provided evidence or facts which would have
reasonably suggested the use of genetically altered stromal cells and genetically altered
stem cells to achieve the homing of the stem cells when administered to a host in the
manner claimed. To the extent that the examiner urges that appellant has recreated a
naturally occurring mechanism by using known members of ligand-receptor binding pairs
and therefore the invention is obvious over the known naturally occurring homing
mechanism, we note that none of the references, relied upon by the examiner, explicitly
describe the natural mechanism alluded to by the examiner. Therefore, it is not possible to
compare the natural interaction between stromal cells and stem cells.
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007