Appeal No. 1996-2568
Application No. 08/071,304
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
The examiner relies on Fabricius for the disclosure of “the use of liposomes as
carriers for gangliosides to be used to suppress the immune response in a host.
Fabricius does not specifically disclose the use of G .” See, Answer, page 4. The
M4
examiner states that “DeLoach disclosures a process for encapsulation inside
resealed erythrocytes of pharmaceutical agents to be administered to animals, but
does not specifically disclose encapsulation of gangliosides.” At page 12 of the Brief,
appellant states that “given the fact that the base reference, Yates, teaches away from
the instant invention in that it would indicate that G would not have the requisite
M4
properties of the instant invention, a person of ordinary skill would have no motivation to
combine Yates and Fabricius [or DeLoach].” We agree with appellant. 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.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007