Appeal No. 1995-4400
Application 07/694,302
"Earl teaches immunization of mice with recombinant vaccinia virus expressing Friend
MuLV gp85", Examiner's Answer, p. 9, Brief, p. 11, nowhere does examiner provide
evidence or cogent technical reasoning to equate Minson's HPV with Chesebro's and
Earl's F-MuLV. We agree with appellants that the examiner "has failed to demonstrate that
HPV and Friend murine leukemia virus (whose epitopes bind antibodies of the present
invention) share epitopes or are even closely related." Brief, p. 12. As appellants have
pointed out (Brief, p. 12), HPV is a double-stranded DNA virus and Friend MuLV is an
RNA retrovirus. Accordingly, we do not see how one of skill would have been led to obtain
monoclonal antibodies specific for an antigenic determinant of a gp85 envelope precursor
protein characteristic of a methanol-fixed F-MuLV infected cell from this combination of
references.
"To establish a prima facie case of obviousness based on a combination of
references, there must be a teaching, suggestion or motivation in the prior art to make the
specific combination that was made by the applicant." In re Dance, 160 F.3d 1339, 1343,
48 USPQ2d 1635, 1637 (Fed. Cir. 1998). While there is no doubt that each of the claimed
limitations are taught by the cited references, the mere fact that the prior art could be
modified to obtain the claimed process does not make the modification obvious unless the
prior art suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). Something in the prior art as a whole must
suggest the desirability and thus the obviousness of making the combination. Lindemann
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