Appeal No. 1995-1977
Application 07/669,403
instant claims. Appellants have not met their burden of showing that the
product in the prior art differs from the product of the instant claims. The
rejection under 35 U.S.C. § 102(b) is therefore affirmed.
2. The rejection under § 103
The examiner rejected method claims 8 and 9 over either Ware or
Doetschman, in view of Evans. According to the examiner, the method taught by
each of Ware and Doetschman meets all the limitations of claims 8 and 9, except
that neither of these references discloses the use of a culture medium containing
both heat-inactivated newborn calf serum and heat-inactivated fetal calf serum.4
The examiner finds this deficiency to be remedied by Evans, who “teaches
that it is well-known in the art to use both newborn calf serum and fetal calf
serum to supplement [the] growth medium when culturing pluripotential
embryonic cells.” Examiner’s Answer, page 6. Thus, the examiner rejected the
claimed method as obvious under 35 U.S.C. § 103.
Appellants argue that the use of heat-inactivated newborn calf serum,
together with heat-inactivated fetal calf serum, is a critical limitation of the
claimed method. Brief, page 21. Appellants argue that Ware does not disclose
use of heat-inactivated newborn calf serum in the ES cell growth medium and
4 The examiner also acknowledged that neither reference discloses selecting stem cells based on
the characteristics recited in claim 8, but “deemed [it] a matter of judicious choice by the skilled
artisan to select the stem cells based upon morphological features.” Examiner’s Answer, page 6.
Although Appellants have not argued that this approach was erroneous, we note that claim 8
requires selection based on specific morphological features (round cells, large nuclei, etc.), not
morphological features generally. The failure of the prior art to teach or suggest this limitation of
the claimed method is an independent basis for reversing the rejection. See In re Dow Chem.
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for
determination of obviousness is whether the prior art would have suggested to one of ordinary
skill in the art that this process should be carried out and would have a reasonable likelihood of
success, viewed in the light of the prior art. Both the suggestion and expectation of success must
be founded in the prior art, not in the applicant’s disclosure.” (citations omitted, emphasis added)).
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007