Appeal No. 1996-1815
Application 07/690,841
number of such antibodies in the prior art. Therefore, one would have a reasonable
expectation of selecting such an antibody when conventional antibody production and
screening methods are used.”
It has also been long held that a conclusion of obviousness must be based upon
facts, not generalities. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165 USPQ
570, 571 (CCPA 1970). Here, the examiner has asserted that the prior art contains
disclosure of a “large number” of antibodies which are useful in Western blots. However,
the examiner has not relied upon any such prior art in support of her rejection under 35
U.S.C. § 103. This Board functions as a Board of review, not a de novo examination
tribunal. 35 U.S.C. § 7(b)(“[t]he [Board] ... shall review adverse decisions of examiners
upon applications for patents ....”). We cannot review conclusions of obviousness based
upon phantom prior art. Rather than asserting what the prior art teaches, it is incumbent
upon the examiner to introduce evidence in the record which establishes what the prior art
does teach. The examiner did not do so here.
Absent a fact-based explanation by the examiner why one of ordinary skill in the art
would have had a reasonable expectation of success in making monoclonal antibodies
specific for an antigenic determinant of thymidylate synthase which would be useful in a
Western blot assay, we do not find the examiner has satisfied her initial burden of
establishing reasons of unpatentability.
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