Appeal No. 1996-2539
Application 08/150,776
would lack the group specific “a” determinant recognizable by antibodies or T-cells elicited
by immunization with conventional HBV vaccines containing HBsAg.
As for “Applicants’ admission of the disclosure of McMahon,” Table II of the present
specification lists seven of the approximately forty “permitted” and “non-permitted” amino
acid substitutions investigated by appellants (see also Figure 1). Some of the
substitutions are attributed to the work of McMahon (unpublished at the time of filing) in
identifying rare serological subtypes of HBV. Again, there is nothing, other than
appellants’ disclosure, to suggest that conventional vaccines containing HBsAg would be
ineffective against HBV exhibiting any of the amino acid substitutions listed in Table II.
We have no doubt that the prior art could be modified in a manner consistent with
appellants’ specification and claims, but the fact that the prior art could be so modified
would not have made 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). Absent a recognition that conventional HBV vaccines would be
ineffective against “non-permitted” variants, we find no reason stemming from the prior art
which would have led a person having ordinary skill to the claimed method. In our
judgment, the only reason or suggestion to combine the references in the manner
proposed by the examiner comes from appellants’ specification. The rejection of the
claims under 35 U.S.C. § 103 is reversed.
REVERSED
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