Appeal No. 1995-2297
Application No. 07/797,493
drawn to a “stable bone marrow graft of lineage-specific human hematopoietic cells” is
unclear.
The examiner simply states “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.” See, e.g., Answer, page 9. The examiner
concludes, “not all the claims recite the argued property. Thus, [a]ppellants’ argument is
not commensurate with the scope of the claims and is thus not persuasive.” The
examiner’s statements are not sufficient.
A rejection under 35 U.S.C. § 103 requires that obviousness be determined based
on the claimed subject matter as a whole. Only when the prior art suggests the subject
matter of a claim as a whole, and provides an enabling disclosure as to how one would
make the claimed invention, can one properly conclude that the subject matter of a claim
would have been obvious under 35 U.S.C. § 103.
The examiner erred in considering the patentability of claims 13 and 14 under
35 U.S.C. § 103 without first “having ascertained exactly what subject matter is being
claimed.” In re Wilder, 429 F.2d at 447, 450, 166 USPQ 545, 548 (CCPA 1970).
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