Appeal No. 1995-1977
Application 07/669,403
that neither Ware nor Evans teach any advantage associated with using heat-
inactivated serum.
“It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.”
Pro-Mold & Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Although couched in terms of combining teachings found in the
prior art, the same inquiry must be carried out in the context of a
purported obvious “modification” of the prior art. The mere fact that
the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification.
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
In this case, the claimed method requires use of a growth medium
containing both heat-inactivated fetal calf serum (heat-inactivated FCS) and heat-
inactivated newborn calf serum (heat-inactivated NCS). Ware teaches a method
of growing ungulate embryonic stem cells that includes growing cells in a
medium containing heat-inactivated FCS. Evans teaches growth of mouse
embryonic stem cells in medium containing both FCS and NCS, but does not
teach or suggest that heat-inactivation of the sera is desirable.5
Thus, none of the references relied on by the examiner teach the inclusion
of heat-inactivated NCS, together with heat-inactivated FCS, in growth medium
for ungulate embryonic stem cells. Nor do the references suggest that changing
the sera added to the growth medium taught by Ware, specifically by adding
5 Doetschman is directed to a method of growing hamster embryonic stem cells. The examiner
has not explained why a person of ordinary skill in the art would have found the teachings of
Doetschman to be relevant to the claimed method of growing ungulate embryonic stem cells.
Therefore, we find that the teachings of Doetschman do not support the instant rejection.
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