Appeal No. 1995-2464
Application No. 08/068,392
DISCUSSION:
The rejection under 35 U.S.C. § 103
Obviousness is a legal conclusion based on the underlying facts. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); Continental Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1270, 20 USPQ2d 1746, 1750 (Fed. Cir. 1991); Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566-68, 1 USPQ2d 1593, 1595-97 (Fed.
Cir. 1987). Here, the dispositive question is whether one of ordinary skill in this art at the
time of the invention would have found the isolated cDNA, which encodes the 470 amino
acid human macrophage metalloelastase, obvious from the disclosure of a murine
macrophage metalloelastase and the suggestion by Shapiro that a homologous human
metalloelastase, not specifically described, could exist and would be desirable to isolate.
We agree with the examiner that one skilled in the art could reasonably read the statement
in Shapiro (Page 4670, column 1, first full paragraph) that:
. . . we demonstrated that Mme is located on mouse chromosome 9,
suggesting that the human homolog of Mme may map to human
chromosome 19 . . . .
as indicating that those skilled in this art would have known of the human macrophage
metalloelastase or the DNA which encodes it. However, this interpretation is in contrast
with the statement at page 3 of the specification that:
despite the efforts of many investigators, human macrophage elastase
activity could not be documented and many doubted its existence.
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