Appeal No. 1997-1817
Application No. 08/139,693
(answer, p. 11). However, the examiner has failed to explain how the lack of species
crossover would have amounted to undue experimentation for the skilled artisan given
appellants' specification and knowledge generally available to those skilled in the art.
Therefore, the rejection under 35 U.S.C. § 112, first paragraph, is reversed.
2. Rejection of claims 1-11 and 16 under § 103 over Forsdyke, Matsuyma and
appellants' "admission"
The examiner bears the initial burden of establishing a prima facie case of
obviousness. To establish a prima facie case of obviousness, there must be both some
suggestion or motivation to modify the reference or combine reference teachings and a
reasonable expectation of success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991). It is insufficient that the prior art discloses the components of the
claimed invention, either separately or in other combinations; there must be some
teaching, suggestion, or incentive to make the combination made by appellants.
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.
Cir. 1988) (insufficient to select from the prior art the separate components of the
inventor's combination, using the blueprint supplied by the inventor).
Forsdyke discloses that effective therapy of AIDS requires achieving two results,
i.e, "activation of all host cells carrying latent virus so that such cells will be destroyed
by the virus. ... [and] prevention of liberated viruses infecting, replicating in and
establishing latency in previously uninfected cells" (p. 25, col. 2, para. 3). According to
Forsdyke, host cells activation occurs under two circumstances, i.e., upon a random
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