Appeal No. 1995-2297
Application No. 07/797,493
mouse host.” See, Answer, page 5. However, as appellants point out, in contrast to the
claimed invention, McCune does not irradiate his mice. See, Brief, page 13.
A second distinction noted by appellants is that none of Pollard, Wade, Fohlmeister
and McCune mentions the use of growth factors. See, Brief, page 14. In contrast, the
claimed invention requires the administration of MGF and GM-CSF/IL-3 FP. At page 11 of
the Answer, the examiner states “[i]t is maintained that it would have been obvious and well
within the skill of the art to select or assay for human growth factors which would be
suitable for administration to a chimeric mouse in order to obtain enhanced engraftment
and differentiation of human hematopoietic cells.” We disagree.
What is missing from the examiner’s analysis is a reason or suggestion to
administer those factors expressly required by the claim. Specifically, MGF and GM-
CSF/IL-3 FP. Without some reason or suggestion to administer MGF and GM-CSF/IL-3
FP, we are left with nothing more than a situation where one would have to vary all
parameters trying numerous possible choices until possibly arriving at a successful result
where the prior art gave no indication of which parameters were critical and no direction as
to which of many possible choices is likely to be successful. “Obvious to try” is not the
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007