Appeal No. 1995-2297
Application No. 07/797,493
motivation to do so found either in the references themselves or in the knowledge generally
available to one of ordinary skill in the art. See In re Fine,
837 F.2d 1071, 1075, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Here, the examiner has
failed to state how a person having ordinary skill in the art would have found appellants’
claimed invention obvious. Furthermore, in resolving questions of obviousness, the
decision-maker must consider the claimed subject matter as a whole. 35 U.S.C. § 103.
Here, the examiner has not adequately considered every limitation in the claims in
reaching her conclusion of obviousness. Accordingly, the examiner has failed to establish
a prima facie case of obviousness. Therefore, we reverse the examiner’s rejection of
claims 9, 11 and 12 over Reisner, Lubin and Kamel.
B. Claims 1, 2, 4 and 6-8 are drawn to a chimeric mouse comprising a stable bone
marrow graft of human hematopoietic cells.
Reisner, Lubin and Kamel teach a chimeric mouse having a stable bone marrow
graft of human hematopoietic cells. Therefore, according to the examiner, Reisner, Lubin
and Kamel each teach the chimeric mouse of claim 4. In response, appellants point out
that the bone marrow preparations of Reisner and Lubin were predominantly
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007