Appeal No. 1995-2297
Application No. 07/797,493
1
host. ” In addition, the examiner notes that Kamel differs from the claimed invention in that
the specific growth factors were not infused at the specific concentrations claimed. See,
Answer, page 5. While, recognizing these differences, the examiner maintains that it
would be obvious to modify the teachings of either Reisner, Lubin or Kamel by
administering effective amounts of human growth factors “in order to obtain enhanced
engraftment, differentiation and proliferation of the desired lineages of human
hematopoietic cells, with a reasonable expectation of success.” See, Answer, pages 4, 5
and 9.
What is missing from the examiner’s analysis is a reason or suggestion to
administer those factors expressly required by the claims. Specifically, MGF and GM-
CSF/IL-3 FP. The initial burden of establishing reasons for unpatentability rests on the
examiner. See In re Oetiker, 977 F.2d. 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Obviousness can only be established by combining or modifying the teachings of
the prior art to produce the claimed invention where there is some teaching, suggestion, or
1The section omitted states “T cell depleted bone marrow from SCID mice is additionally
grafted into the irradiated mouse host . . . .” Appellants highlight this difference by stating
“bone marrow cells from at least two different sources (SCID mice and human BM cells)
were added to another strain of mouse.” Brief, page 6. However, the claimed invention
uses the transitional phrase “comprising” which allows for the inclusion of additional cells.
9
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